Paper No. __
`Filed: July 20, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`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 PRELIMINARY RESPONSE
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`
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`TABLE OF CONTENTS
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`
`I.
`
`INTRODUCTION ......................................................................................... 1
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`II.
`
`BACKGROUND ............................................................................................ 3
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`A.
`
`B.
`
`Patent Owner Has A Long History As An Innovator. ..................... 3
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`The ’183 Patent Is Pioneering. ........................................................... 4
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`III. PROPER CLAIM CONSTRUCTION ........................................................ 7
`
`A.
`
`B.
`
`“closely spaced array of input touch terminals of a keypad” /
`“small sized input touch terminals of a keypad” ............................. 9
`
`“oscillator voltage is greater than a supply voltage” / “peak
`voltage of the [oscillator’s] signal output frequencies is greater
`than a supply voltage” .......................................................................14
`
`C.
`
`“selectively providing signal output frequencies” ..........................17
`
`IV. REFERENCES RELIED ON BY PETITIONER ....................................20
`
`A.
`
`Ingraham I and II Teach Away From The ’183 Patent. ................20
`
`1.
`
`2.
`
`Ingraham I and II Do Not Teach or Disclose the “Input
`Touch Terminals” Limitation. ...............................................20
`
`Ingraham I and II Do Not Teach or Disclose Any Oscillator
`Circuit. .....................................................................................23
`
`B.
`
`Caldwell Teaches Away From The ’183 Patent. .............................25
`
`C. Gerpheide Teaches Away From The ’183 Patent. ..........................32
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`V. GROUND I ...................................................................................................33
`
`A.
`
`Petitioner Does Not Show That All Elements Exist In The Art. ...34
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim Elements 37(b) and (c) ................................................34
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`Claim Element 37(d) ...............................................................37
`
`a.
`
`b.
`
`“input touch terminals” ...............................................38
`
`“selectively providing signal output
`frequencies” ...................................................................41
`
`Claim Element 37(e) ...............................................................45
`
`Claim Elements 37(f), 37(g), and 37(h) .................................46
`
`B.
`
`The Remaining Arguments Also Fail Under Petitioner’s Flawed
`Analysis of Claim 37. .........................................................................51
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`Independent Claim 40 .............................................................51
`
`a.
`
`b.
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`Claim Element 40(h) .....................................................52
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`Claim Element 40(i) ......................................................54
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`Independent Claim 61 .............................................................55
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`Independent Claim 83 .............................................................56
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`Independent Claim 94 .............................................................57
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`Dependent Claims 41, 43, 45, 64-67, 69, 85, 86, 88, 90, 91, 96,
`97, 99, 101, 102 .........................................................................57
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`C.
`
`The Ingraham I-Caldwell-Gerpheide Combination Does Not
`Render the Claims Obvious. .............................................................58
`
`VI. GROUND II .................................................................................................59
`
`A.
`
`The Ingraham I-Caldwell-Gerpheide-Wheeler Combination Does
`Not Render Obvious Claims in Ground II. .....................................59
`
`VII. PETITIONER DOES NOT MEET THE STANDARD REQUIRED
`FOR INSTITUTION. ..................................................................................60
`
`A.
`
`Petitioner Provides No Rationale Or Motivation To Combine The
`References And Uses Improper Hindsight. ....................................61
`
`B.
`
`The References Could Not Be Combined In Any Event. ..............63
`
`VIII. PETITIONER IGNORES SECONDARY CONSIDERATIONS OF
`NON-OBVIOUSNESS. ................................................................................63
`
`IX. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION UNDER 35 U.S.C. 325(d). .............................................64
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`X. CONCLUSION ............................................................................................65
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`ii
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293 (Fed. Cir. 2015) ................................58
`
`Apple Inc. v. Contentguard Holdings, Inc, IPR2015-00452, Paper 9
`
`(PTAB July 13, 2015) ..........................................................................................63
`
`Apple Inc. v. Contentguard Holdings, Inc, IPR2015-00453, Paper 9
`
`(PTAB July 13, 2015) ..........................................................................................60
`
`Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, Paper 11 (May
`
`28, 2015) ..............................................................................................................60
`
`Ceramtec Gmbh v. Ceramedic, LLC, IPR2015-00424, Paper 9 (PTAB
`
`July 7, 2015) .........................................................................................................64
`
`CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356 (Fed. Cir. 2007) ..................15
`
`Curtiss–Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374
`
`(Fed. Cir. 2006) ....................................................................................................10
`
`Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902 (Fed.
`
`Cir. 1988) ...................................................................................................... 61, 63
`
`In re Bulloch, 604 F.2d 1362 (CCPA 1979) ............................................................52
`
`In re Eric Jasinski, 508 Fed. Appx. 950 (Fed. Cir. 2013) (unreported) ..................53
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed.
`
`Cir. 2012) ................................................................................................ 59, 63, 64
`
`McGinley v. Franklin Sports, Inc., 262 F.3d 1339 (Fed. Cir. 2001) .......................63
`
`Microboards Tech., LLC d/b/a Afinia v. Stratasys, Inc., IPR2015-
`
`00287, Paper 13 (May 28, 2015) .................................................................. 61, 64
`
`O.I. Corp. v. Techmar Co., 115 F.3d 1576 (Fed. Cir. 1997) ...................................13
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................7, 8
`
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`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755 (Fed.
`
`Cir. 2015) .............................................................................................................63
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711
`
`F.3d 1348 (Fed. Cir. 2013) .................................................................................... 8
`
`Samsung Elec. Co., Ltd. v. Unifi Scientific Batteries, LLC, IPR2013-
`
`00236, Paper 10 (PTAB Sept. 25, 2013) .............................................................53
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
`
`1337 (Fed. Cir. 2001) .................................................................................... 10, 13
`
`Vitronics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) .............................. 7
`
`Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330 (Fed. Cir. 2010) ........................53
`
`Statutes
`
`35 U.S.C. § 312(c) ..................................................................................................... 8
`
`Regulations
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`37 C.F.R. § 42.104(b)(3) ............................................................................................ 8
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`LIST OF EXHIBITS
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`Declaration of Dr. Darran Cairns
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`2002
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`2003
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`Curriculum Vitae of Dr. Darran Cairns
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`2004
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`List of Patents and Applications Citing U.S. Patent 5,796,183
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`2005
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`Nartron “Industry Firsts”
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`2006
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`U.S. Patent 5,572,205 (Caldwell et al.)
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`INTRODUCTION
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`I.
`
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`Petitioner misapprehends the disclosure and the claims it challenges, ignoring
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`that the ’183 Patent paved the way for today’s compact, multi touch pad devices.
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`All claims at issue are directed to multi touch terminal devices, just one of the
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`embodiments disclosed in the ’183 Patent. Yet, Petitioner exclusively cites only to
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`disclosures of the ’183 Patent that relate to single touch pad devices.
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`Furthermore, Petitioner cherry picks disparate elements from the prior art
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`without explaining how these elements operate or how they meet the claims. Even
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`after cherry picking, Petitioner provides no motivation to combine the prior art and
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`no basis for why a person of ordinary skill in the art would have a reasonable
`
`expectation that this disparate art could be combined in the manner taught by the
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`’183 Patent.
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`Petitioner’s challenges are fatally flawed and Patent Owner, UUSI, LLC d/b/a
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`Nartron (“Patent Owner” or “Nartron”) respectfully requests that the Board deny the
`
`Petition for the following reasons.
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`First, nowhere in Petitioner’s prior art is there anything that discloses the
`
`claimed “oscillator voltage is greater than a supply voltage” or “peak voltage of the
`
`signal output frequencies is greater than a supply voltage” (the “oscillator voltage”
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`limitations). Because none of the prior art references discloses a circuit wherein the
`
`voltage of the signal output from the oscillator is greater than the voltage of the
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`supply signal to the oscillator, Petitioner cobbles together two supply voltages from
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`prior art references that do not show any oscillator circuit at all. Moreover, these
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`references were solving a different problem and operate in many substantially
`
`different ways from the circuit claimed in the ’183 Patent.
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`Second, Petitioner disregards the claim language and teachings in the
`
`specification with respect to the claim limitations “closely spaced array of input
`
`touch terminals of a keypad” and “small sized input touch terminals of a keypad”
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`(the “input touch terminals” limitations). The ’183 Patent expressly distinguishes
`
`the prior art, including that relied on by Petitioner, stating that the input touch
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`terminals of the multi touch pad keyboard at issue here must be smaller or in a more
`
`closely spaced array than those found in that prior art. In stark contrast to
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`Petitioner’s prior art, the multi touch pad keyboard of the ’183 Patent does not
`
`require any physical structure to isolate adjacent touch terminals. The multiple touch
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`pad terminals in Petitioner’s references require physical structures as part of the
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`terminals themselves to reduce cross talk.
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`Third, Petitioner relies on three references in an attempt to show that the prior
`
`art teaches the claim limitation “selectively providing signal output frequencies.”
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`Here, again, Petitioner ignores that the ’183 Patent functions in a manner that is
`
`wholly distinct from the way that the prior art references operate. The arguments
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`and prior art that Petitioner relies upon with respect to this claim element are
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`precisely the same as those that were previously presented to the PTO during re-
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`examination and overcome by the addition of this limitation.
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`Fourth, Petitioner has not shown that there could be any motivation to
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`combine the cited references or that any combination would lead to a reasonable
`
`expectation of success. Petitioner uses the ’183 Patent as a roadmap to cobble
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`together disparate prior art references for an obviousness combination without any
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`regard to how the references would function as a whole.
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`Fifth, the Board should exercise its discretion to deny the petition because all
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`the critical arguments made in the present matter were previously made to the PTO
`
`during prosecution and found unavailing. Nothing new can be gleaned by yet
`
`another look at the same art.
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`II. BACKGROUND
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`
`A.
`
`Patent Owner Has A Long History As An Innovator.
`
`
`
`Nartron’s success in the marketplace was founded on researching, designing
`
`and building individual components of end products to optimize the design of every
`
`component and enhance the end product. Nartron became known as an innovator
`
`within the automotive and electronic fields and was named one of America’s
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`“Innovation 50” companies by INC Magazine. http://www/nartron.com/offsite-
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`2/About.
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`Nartron has been awarded a number of pioneering patents for the electronic
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`products that it successfully developed and commercialized, including the first
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`electrically powered steering system, the first keyless entry system, and a car
`
`window system that senses an object in its path. Ex. 2005. Nartron also was the
`
`first to develop and produce interactive displays/touchscreens. Natron invented
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`much of the early touchscreen technology upon which today’s smartphone and tablet
`
`touchscreens are based. Ex. 1014, at 1. Three of the oldest prior art references cited
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`by Petitioner (i.e., Ingraham I, II, and III) are all Nartron’s own inventions.
`
`B.
`
`The ’183 Patent Is Pioneering.
`
`
`
`The ’183 Patent is exemplary of Nartron’s efforts as a pioneer in touchscreen
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`technology, and builds upon and provides significant improvements over
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`Petitioner’s references. Filed over 20 years ago, the ’183 Patent provides the
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`foundation upon which today’s touch screen technology is built. Ex. 1014, at 1; Ex.
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`2002, ¶¶15-29. Numerous patents filed subsequent to the issuance of the ’183 Patent
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`cite to the ’183 Patent. Ex. 2002, ¶16; Ex. 2004.
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`The ’183 Patent has been through two reexaminations and all but three1 of the
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`challenged claims were added during the second reexamination. The ’183 Patent
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`generally relates to a capacitive responsive electronic switching circuit including an
`
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`1 Claims 37, 38, and 39 were added during the first reexamination.
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`oscillator providing a periodic output signal, an input touch terminal defining an area
`
`for an operator to provide an input by proximity and touch, and a detector circuit
`
`coupled to the oscillator for receiving the periodic output signal from the oscillator,
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`and coupled to the input touch terminal. Ex. 1001, ’183 Patent, Abstract.
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`At the time of the invention, there was a drive to make capacitive touch
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`keypads smaller while increasing the number of touch terminals on the keypad. A
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`substantial barrier existed; the more densely the touch terminals were spaced and the
`
`smaller the touch terminals became, the greater the risk of coupling adjacent touch
`
`terminals, resulting in multiple actuations where only a single actuation is desired.
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`Ex. 1001 at 3:64-4:8. At the time, the only known way to put touch pads as closely
`
`together as possible was to incorporate physical structures as a part of each touch
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`terminal in an effort to prevent inadvertent actuation of adjacent touch pads. Id.; Ex.
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`2002, ¶¶17-20. However, these structures—guard rings, guard bands, or a
`
`combination of electrodes with opposing fields (collectively referred to as “guard
`
`rings”)—presented a barrier to developing a truly compact device because they
`
`require additional space and limit the proximity and size of the touch terminals.
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`There was no known way to overcome this problem until the invention disclosed in
`
`the ’183 Patent. Ex. 2002, ¶¶17-20. By eliminating the requirement for guard rings
`
`in a multi touch pad configuration, the ’183 Patent offers improvements in detection
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`sensitivity that allow and enable employment of a multiplicity of small-sized touch
`
`terminals in a physically close array. Ex. 1001 at 5:53-57.
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`First, 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 floating common
`
`provides a reference that is 5V away from the high-frequency oscillator output
`
`signal, enabling the system to compare the signals that 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;
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`5:48-53; 16:12-24; Ex. 2002, ¶25.
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`Second, the ’183 Patent also uses an oscillator that outputs a signal with a
`
`voltage that is as high as possible, for example a 26V peak square wave, while at the
`
`same time is low enough to obviate the need for expensive components and testing
`
`to alleviate safety concerns. Ex. 1001 at 6:6-13; 12:6-23; Ex. 2002, ¶26.
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`Third, the ’183 Patent’s detection circuit “operates at a higher frequency than
`
`prior art touch sensing circuits” which “is not a benign choice” relative to the prior
`
`art circuits. Ex. 1001 at 8:9-14. 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
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`and adjacent pads 59.” Id. at 11:1-9; Fig 3A. “This . . . result[s] in a much lower
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`incidence of inadvertent actuation of adjacent touch pads to that of the touched pad.”
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`Id.; see also id. at 11:19-25; Ex. 2002, ¶27.
`
`Thus, to permit touch terminals to be extremely small and closely spaced,
`
`while also avoiding inadvertent actuations, the ’183 Patent discloses a circuit with
`
`very high frequencies, a floating common generator, and as high an oscillator voltage
`
`as possible without the need for physical structures like guard rings to isolate the
`
`touch terminals. Ex. 1001 at 8:9-11:60; Ex. 2002, ¶28.
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`III. PROPER CLAIM CONSTRUCTION
`
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`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). The first step in construing claims is to “look
`
`to the words of the claims themselves.” Vitronics Corp. v. Conceptronic, 90 F.3d
`
`1576, 1582 (Fed. Cir. 1996). Second, the specification must be considered. “[T]he
`
`specification is always highly relevant to the claim construction analysis. Usually,
`
`it is dispositive; it is the single best guide to the meaning of a disputed term.” Id.
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`Further, the prosecution history may “demonstrat[e] how the inventor understood
`
`the invention and whether the inventor limited the invention in the course of
`
`prosecution.” Phillips, 415 F.3d at 1317.
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`Here, instead of setting forth a precise statement on how the independent
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`claims are to be construed as required, 35 U.S.C. § 312(c); 37 C.F.R. § 42.104(b)(3),
`
`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
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`Court litigation. Petition at 12. Those positions are irrelevant here because, as a
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`party opposing an infringement claim, Petitioner’s litigation-induced constructions
`
`are inherently unreliable and can suffer from bias. Phillips, 415 F.3d at 1318.
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`Petitioner’s purported constructions are additionally irrelevant because they rely on
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`citations to the ’183 Patent specification that consistently refer to the single touch
`
`keypad, not the multi touch version that is the subject of the challenged claims.
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`Moreover, Petitioner’s expert, Dr. Subramanian, purports to be applying the
`
`“plain and ordinary meaning” of the claim terms in his analysis, but he has not
`
`identified those meanings, and it is not clear what constructions he is applying. Ex.
`
`2002, ¶30. His analysis must therefore be discounted, if credited at all. Power
`
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1361-62
`
`(Fed. Cir. 2013) (rejecting construing term according to “plain and ordinary
`
`meaning” in light of contrary testimony consistent with specification).
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`Notably, there are three claim limitations that are not found in the prior art,
`
`but that appear in each of the challenged claims.
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` “closely spaced array of input touch terminals of a keypad” /
`“small sized input touch terminals of a keypad”
`
`These limitations, referred to as the “input touch terminals” limitations, are
`
`present in every claim at issue. As explained below, the ’183 Patent strives to
`
`achieve compactness and derides the requirement of additional means such as guard
`
`rings to adjust the detection sensitivity. Thus, based on the language of the claims,
`
`the specification, and the understanding of one of ordinary skill in the art
`
`(“PHOSITA”), the “input touch terminals” limitation should be construed to mean
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`touch terminals that are closely-spaced or small-sized without requiring physical
`
`structures to isolate the touch terminals.
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`First, the claim language itself makes clear that input touch terminals are
`
`either “small” or in a “closely spaced array.” Claims 37, 83, and 94 (and their
`
`dependent claims) recite a “closely spaced array of input touch terminals of a
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`keypad” and claims 40, 61 (and their dependent claims) recite “small sized input
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`touch terminals of a keypad. These limitations appear only in the multi touch pad
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`claims. Ex. 2002, ¶34.
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`The specification must therefore be considered as to whether the patentee
`
`distinguished the prior art on the basis of a particular embodiment, expressly
`
`disclaimed subject matter, or described a particular embodiment as important to
`
`the invention. Curtiss–Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374,
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`1378 (Fed. Cir. 2006); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
`
`Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (“Where the specification makes clear
`
`that the invention does not include a particular feature, that feature is deemed to be
`
`outside the reach of the claims”).
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`The ’183 Patent teaches both single touch pad and multi touch pad
`
`embodiments. The specification is unequivocal that the multi touch pad embodiment
`
`is different from the prior art in that it does not require the use of guard rings. Ex.
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`2002, ¶35. For example, the ’183 Patent explains that “[a]n additional consideration
`
`in using zero force switches resides in the difficulties that arise in trying to employ
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`dense arrays of such switches.” Ex. 1001 at 3:54-4:3. The ’183 Patent further
`
`teaches that the prior art Ingraham I patent “employs conductive guard rings around
`
`the conductive pad of each touch terminal in an effort to decouple adjacent touch
`
`pads and prevent multiple actuations where only a single one is desired.” Id. at 4:3-
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`8. Thus, where Ingraham I’s touch terminals require guard rings in order to function,
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`the ’183 Patent discourages guard rings because, in a multi touch embodiment that
`
`requires guard rings, the sensitivity of the detection circuits is such that it requires
`
`the operator’s finger to substantially overlap the touch terminal. Id. at 4:10-14.
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`Moreover, even with the use of guard rings, susceptibility to surface contaminants,
`
`cross talk, and multiple actuations of adjacent touch pads remains a problem. Id. at
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`4:14-24. The ’183 Patent strives to improve upon the prior art by the use of sensitive
`
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`detection circuitry, disclosing that “[s]mall touch terminals placed in close proximity
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`by necessity require sensitive detection circuits.” Ex. 1001 at 4:24-25; Ex. 2002,
`
`¶36.
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`FIG. 11 of the ’183 Patent, reproduced below, depicts a multiple touch pad
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`embodiment:
`
`
`
`
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`The multiple touch pad circuit of Figure 11 is a variation of the embodiment
`
`shown in Figure 4. The specification discloses that “the touch circuit 400 shown in
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`FIGS 4 and 8 and the input touch terminal pad 451 (FIG 4)” are included in the
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`Figure 11 embodiment. Not included is Figure 4’s guard ring 460. Ex. 1001. at
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`18:39-43.
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`The multiple touch pad embodiment includes an array of touch detection
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`circuits designated as 9001 through 900nm. Id. at 18:34-41; Ex. 2002, ¶37. Figure 8,
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`11
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`reproduced below, depicts the touch detection circuitry that is used for touch circuits
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`9001 through 900nm.
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`
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`Ex. 1001, Figure 8. As seen in Figure 8, the touch detection circuit does not include
`
`a guard ring. The ’183 Patent explains that “[t]ouch circuit 400, as shown in FIG. 8,
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`preferably includes a transistor 410 having a base connected to touch pad 450 via
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`resistor 413 and line 451.” Ex. 1001 at 14:47-49. Thus, in the multi touch pad
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`embodiment, line 451 is connected directly to the touch pad itself, without requiring
`
`any extra components such as guard rings. Ex. 2002, ¶38.
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`The ’183 Patent explains that:
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`The use of high frequency in accordance with the present invention
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`provides distinct advantages for circuits such as the multiple touch pad
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`circuit of the present invention due to the manner in which crosstalk is
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`substantially reduced without requiring any physical structure to
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`isolate the touch terminals. Further, the reduction in crosstalk afforded
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`by the present invention allows the touch terminals in the array to be
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`more closely spaced together.
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`Id. at 18:66-19:6 (emphasis added).
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`Moreover, after distinguishing the prior art use of guard rings because they
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`prevent touch pads from being small and close, the ’183 Patent further explains that
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`the very invention of the multi touch terminal disclosure is that it “offers
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`improvements in detection sensitivity that allow close control of the degree of
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`proximity (ideally very close proximity) that is required for actuation and to enable
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`employment of a multiplicity of small sized touch terminals in a physically close
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`array such as a keyboard.” Ex. 1001 at 5:53-57. Thus, guard rings are not required
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`in the multi touch pad configuration. Ex. 2002, ¶39.
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`Notably, Petitioner not once refers to the multi touch pad embodiment of
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`Figure 11, and focuses solely on a single touch embodiment illustrated by Figure 4.
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`While Figure 4 includes a guard band (460), this feature is not required in the multi
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`touch pad embodiment of Figure 11 so that the input touch terminals can be small
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`sized and closely spaced. Because the specification makes clear that the invention
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`does not require guard rings in the multi touch pad system, that feature should not
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`be a requirement of the claims. SciMed, 242 F.3d at 1341; O.I. Corp. v. Techmar
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`Co., 115 F.3d 1576, 1581 (Fed. Cir. 1997) (claim element not encompassed by prior
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`art where specification repeatedly described characteristics of element and
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`distinguished them from characteristics of the prior art)..
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`In sum, the specification describes that, to achieve the smallness and closeness
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`of the claimed input touch terminals, the multi touch pad invention does not require
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`guard rings. A PHOSITA would therefore understand that “closely spaced array of
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`input touch terminals of a keypad” / “small sized input touch terminals of a keypad”
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`means touch terminals that are closely-spaced or small-sized without requiring
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`physical structures to isolate the touch terminals. Ex. 2002, ¶40.
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`B.
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`“oscillator voltage is greater than a supply voltage” / “peak voltage
`of the [oscillator’s] signal output frequencies is greater than a
`supply voltage”
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`These limitations, collectively referred to as the “oscillator voltage”
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`limitation, are relevant to all claims at issue except claim 40 and its dependent
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`claims. The “oscillator voltage” limitation should be construed as meaning that the
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`oscillator, and its supply signal and periodic output signal having a predefined
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`frequency, must be within the capacitive responsive electronic switching circuit, not
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`outside of the switching circuit such as an external commercial power supply from
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`the wall.
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`Turning first to the claim language, all of the claims at issue recite a capacitive
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`responsive electronic switching circuit comprising an oscillator that outputs a
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`periodic output signal having a predefined frequency.2 “Comprising” in a patent
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`claim means “including, but not limited to.” CIAS, Inc. v. Alliance Gaming
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`Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). Accordingly, the claimed oscillator
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`must be included in, not external to, the electronic switching circuit. Ex. 2002, ¶¶41-
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`42.
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`Claim 37 further recites that the “oscillator voltage is greater than the supply
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`voltage,” whereas claims 61, 83 and 94 recite that the “peak voltage of the
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`[oscillator’s] signal output frequencies is greater than a supply voltage.” Thus, these
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`claims and their dependent claims all require a capacitive responsive electronic
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`switching circuit that includes an oscillator that has an output voltage that is greater
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`than its supply voltage. A PHOSITA would understand that the oscillator of the
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`’183 Patent, and the signal it outputs, are components included within the responsive
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`electronic switching circuit. Ex. 2002, ¶¶41-44.
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`The ’183 Patent explains that the voltage of the signal output from its
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`oscillator circuit is sufficiently high to resolve the aforementioned issues related to
`
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`2 While claim 40 does not require the oscillator voltage be greater than the supply
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`voltage, it, like the other claims at issue, recites a capacitive responsive electronic
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`switching circuit comprising an oscillator that outputs a periodic output signal
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`having a predefined frequency.
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`eliminating the guard rings, yet also sufficiently low that it “obviates the need for
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`expensive . . . construction measures and testing to handle what would otherwise be
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`large enough voltages to cause safety concerns.” Ex. 1001 at 6:1-13 (distinguishing
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`Ingraham III). The ’183 Patent discloses one embodiment in which the voltage
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`generated by the oscillator is 26V peak square wave. Id. at 6:1-13; 12:6-13; Ex.
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`2002, ¶45.
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`Regarding the supply voltage, the ’183 Patent discloses an embodiment in
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`which “a regulated 5V DC power” is supplied to the oscillator. Ex. 1001 at 11:64-
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`12:2. A PHOSITA would understand that this 5V DC power is the supply voltage
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`to the oscillator. In order to reach a higher output signal voltage than the input signal
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`voltage, the disclosed oscillator preferably includes a buffer circuit that boosts the
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`peak output of the oscillator from 5V to 26V, while maintaining the preferred
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`frequency. Id. at 13:32-39; Ex. 2002, ¶46.
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`Because the express language of the claims requires that the oscillator and the
`
`signal it outputs is a component within the responsive electronic switching circuit,
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`an external commercial power supply from the wall cannot be the claimed oscillator
`
`signal output. The ’183 Patent explains that if the power source to the system is very
`
`high, for example, “a 110V AC 60 Hz commercial power line, a transformer may be
`
`added to convert the 110V AC power to 24V AC.” Ex. 1001 at 13:23-29. A
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`PHOSITA would understand that neither