`571-272-7822
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`Paper 35
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`Entered: October 18, 2017
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`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 5,796,183
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd. (“Petitioner”) sought inter partes
`review of claims 37–41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96,
`97, 99, 101, and 102 of U.S. Patent No. 5,796,183 (Ex. 1001, “the ’183
`patent”), owned by UUSI, LLC d/b/a Nartron (“Patent Owner”). Paper 2
`(“Petition” or “Pet.”). Patent Owner filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted an inter partes review of claims 40, 41, 43, 45, 47,
`48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the
`“Instituted Claims”) pursuant to 35 U.S.C. § 314. Paper 12 (“Decision on
`Institution” or “Dec. on Inst.”). We did not institute, however, review of
`claims 37–39 because we determined Petitioner had not established a
`reasonable likelihood that it would prevail with respect to those claims. Id.
`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 21, “PO Resp.”), and Petitioner filed a Reply thereto (Paper 24,
`“Reply”). An oral hearing was conducted on June 22, 2017. The record
`contains a transcript of the hearing (Paper 34, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`preponderance of the evidence. See 35 U.S.C. § 316(e); see also 37 C.F.R.
`§ 42.1(d). This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has not shown by a preponderance of the evidence that any of the Instituted
`Claims are unpatentable.
`Related Proceedings
`A.
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
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`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014
`(“Reexam 2”). The Instituted Claims were added during Reexam 2. See
`generally Ex. 1006.
`The ’183 patent is the subject of ongoing litigation between the parties
`in the Western District of Michigan: UUSI, LLC d/b/a Nartron v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No.
`1:15-cv-00146-JTN, originally filed on February 13, 2015 (W.D. Mich.)
`(the “District Court litigation”). Pet. 1. The District Court litigation is
`stayed and administratively closed until resolution of the instant inter partes
`review. Order, Case No. 1:15-cv-00146-JTN, Dkt. No. 62 (filed 05/02/16).
`The ’183 patent (Ex. 1001)
`B.
`The ’183 patent relates to a “capacitive responsive electronic
`switching circuit used to make possible a ‘zero force’ manual electronic
`switch.” Ex. 1001, 1:6–9. According to the ’183 patent, zero force touch
`switches have no moving parts and no contact surfaces that directly switch
`loads. Id. at 1:40–41. Instead, such switches detect an operator’s touch and
`use solid state electronics to switch loads or activate mechanical relays. Id.
`at 1:42–44. “A common solution used to achieve a zero force touch switch
`has been to make use of the capacitance of the human operator.” Id. at 3:12–
`14. The ’183 patent recites three methods used by capacitive touch switches
`to detect an operator’s touch, one of which relies on the change in capacitive
`coupling between a touch terminal and ground. Id. at 3:14–15, 3:44–46. In
`this method, “[t]he touch of an operator then provides a capacitive short to
`ground via the operator’s own body capacitance that lowers the amplitude of
`oscillator voltage seen at the touch terminal.” Id. at 3:52–56. Significantly,
`the operator of a capacitive touch switch using this method need not come in
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`conductive contact with the touch terminal. Id. at 3:57–59. Rather, the
`operator needs only to come into close proximity of the switch. Id.
`Figure 11 of the ’183 patent is reproduced below.
`
`
`Figure 11 depicts a “multiple touch pad circuit” including “an array of
`touch circuits.” Id. at 18:34–46. The ’183 patent recognizes that placing
`capacitive touch switches in dense arrays can result in unintended actuations.
`Id. at 3:65–4:3. One method of addressing this problem known in the art
`involves placing guard rings around each touch pad. Id. at 4:4–10. Another
`known method of addressing this problem is to adjust the sensitivity of the
`touch pad such that the operator’s finger must entirely overlap a touch
`terminal. Id. at 4:10–14. “Although these methods (guard rings and
`sensitivity adjustment) have gone a considerable way in allowing touch
`switches to be spaced in comparatively close proximity, a susceptibility to
`surface contamination remains as a problem.” Id. at 4:14–18.
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`The ’183 patent seeks to overcome the problem of unintended
`actuation of small capacitive touch switches “by using the method of sensing
`body capacitance to ground in conjunction with redundant detection
`circuits.” Id. at 5:33–35. Specifically, the ’183 patent’s touch detection
`circuit operates at frequencies at or above 50 kHz, and preferably at or above
`800 kHz, in order to minimize the effects of surface contamination on the
`touch pads. Operating at these frequencies also improves sensitivity,
`allowing close control of the proximity required for actuation of small-sized
`touch terminals in a close array, such as a keyboard. Id. at 5:48–57.
`Illustrative Claim
`C.
`Independent claim 40 illustrates the claimed subject matter and is
`reproduced below.
`40. A capacitive responsive electronic switching circuit
`comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`a microcontroller using the periodic output signal from
`the oscillator, the microcontroller selectively providing signal
`output frequencies to a plurality of small sized input touch
`terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
`output frequency to each row of the plurality of small sized
`input touch terminals of the keypad;
`the plurality of small sized input touch terminals defining
`adjacent areas on a dielectric substrate for an operator to
`provide inputs by proximity and touch; and
`a detector circuit coupled to said oscillator for receiving
`said periodic output signal from said oscillator, and coupled to
`said input touch terminals, said detector circuit being
`responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said touch terminals when
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`proximal or touched by the operator to provide a control output
`signal,
`wherein said predefined frequency of said oscillator and
`said signal output frequencies are selected to decrease a first
`impedance of said dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`
`D. Cited References
`Petitioner relies on the following references:
`1. Ingraham, U.S. Patent No. 5,087,825, issued Feb. 11, 1992,
`(Ex. 1007, “Ingraham I”) along with portions of Ingraham, U.S.
`Patent No. 4,731,548, issued Mar. 15, 1988 (Ex. 1008, “Ingraham
`II”) incorporated by reference.
`2. Caldwell, U.S. Patent No. 5,594,222, issued Jan. 14, 1997
`(Ex. 1009, “Caldwell”).
`3. Gerpheide et al., U.S. Patent No. 5,565,658, issued Oct. 15, 1996
`(Ex. 1012, “Gerpheide”).
`4. Wheeler et al., U.S. Patent No. 5,341,036, issued Aug. 23, 1994
`(Ex. 1015, “Wheeler”).
`Instituted Grounds of Unpatentability
`E.
`We instituted trial based on two grounds of unpatentability under
`35 U.S.C. § 103(a) (Dec. on Inst. 31):
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`References
`
`Instituted Claims
`
`Ingraham I, Caldwell,
`Gerpheide
`
`40, 41, 43, 45, 61, 64–67, 69,
`83, 85, 86, 88, 90, 91, 94, 96,
`97, 99, 101, and 102
`
`Ingraham I, Caldwell,
`Gerpheide, Wheeler
`
`47, 48, 62, 63, and 84
`
`
`
`Testimony
`F.
`Petitioner supports its challenges with a declaration of Dr. Vivek
`Subramanian (Ex. 1002), filed contemporaneously with the Petition, and a
`rebuttal declaration of Dr. Subramanian (Ex. 1017), filed contemporaneously
`with the Reply. Dr. Subramanian testified further by deposition on
`February 3, 2017, and a transcript of his testimony has been entered into
`evidence. Ex. 2009.
`Patent Owner rebuts Petitioner’s challenges with a declaration of
`Dr. Darran Cairns (Ex. 2002), filed contemporaneously with the Preliminary
`Response, and an additional declaration of Dr. Cairns (Ex. 2010), filed
`contemporaneously with the Patent Owner Response. Dr. Cairns testified
`further by deposition on April 21, 2017, and a transcript of his testimony has
`been entered into evidence. Ex. 1018.
`
`
`II. ANALYSIS
`Principles of Law
`A.
`To prevail in its challenges to the Instituted Claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
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`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) where in evidence,
`so-called secondary considerations, including commercial success, long-felt
`but unsolved needs, failure of others, and unexpected results. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`Citing testimony of its declarant, Dr. Subramanian, Petitioner
`contends that a person having ordinary skill in the art at the time of the
`invention would have had a minimum of: (1) a bachelor’s degree in
`electrical engineering, or equivalent thereof; and (2) “two to three years of
`experience in the relevant field, which includes touch systems technology.”
`Pet. 3 (citing Ex. 1002 ¶ 19).
`Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary
`skill “in the art of capacitive touch sensors would have had at least a
`bachelor’s degree in physics or electrical engineering or equivalent industry
`experience in the field.” Ex. 2002 ¶ 14.
`The levels of ordinary skill proposed by the parties do not differ
`significantly. Both parties’ proposed descriptions require at least an
`undergraduate degree in electrical engineering or related technical field, and
`both value industry experience (although Petitioner quantifies this
`experience as two to three years). We adopt Petitioner’s proposed definition
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`as more representative, but note that our analysis would be the same under
`either definition. We further find the level of ordinary skill in the art is
`reflected by the prior art of record. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995).
`
`Claim Construction
`C.
`The ’183 patent expired on January 31, 2016. Pet 11; Prelim. Resp. 7.
`Our review of the claims of an expired patent is “similar to that of a district
`court’s review,” wherein claim terms are given their ordinary and customary
`meaning as understood by a person of ordinary skill in the art at the time of
`the invention, as set forth by the Court in Phillips v. AWH Corp., 415 F.3d
`1303, 1312–14 (Fed. Cir. 2005) (en banc). In re Rambus, Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–45 (2016). Any special definition for a claim term must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner urges that we need not construe the terms of the Instituted
`Claims. Pet 12. To the extent we construe a particular term, Petitioner urges
`that we adopt the constructions it proposed in the District Court litigation.
`Id. In its Preliminary Response, Patent Owner sought construction of three
`sets of claim limitations, namely:
`1. “peak voltage of the signal output frequencies is greater than a
`supply voltage” as recited in each of independent claims 61, 83,
`and 94 (hereinafter, the “supply voltage limitation”);
`2. “closely spaced array of input touch terminals of a keypad,” as
`recited in each of independent claims 83 and 94 and “small
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`sized input touch terminals of a keypad,” as recited in each of
`independent claims 40 and 61 (collectively, the “input touch
`terminals limitations”); and
`3. “selectively providing signal output frequencies,” as recited in
`each of independent claims 40, 61, 83, and 94.
`Prelim. Resp. 9–19.
`We declined to adopt Patent Owner’s constructions of these
`limitations in our Decision on Institution. Dec. on Inst. 10–12. In so doing,
`we determined that one of ordinary skill in the art would understand the term
`“supply voltage” in the supply voltage limitation as referring to a supply
`voltage of the claimed microcontroller. Id. at 10. Contrary to Patent
`Owner’s contention, we determined the claim language does not restrict the
`supply voltage to exclude an external commercial power supply. Id. We
`further determined in our Decision on Institution that the input touch
`terminals limitations do not preclude the presence of physical structures
`isolating adjacent touch terminals. Id. at 10–11. Although we addressed
`Patent Owner’s proposed constructions of the limitations enumerated above,
`we did not construe further these limitations because additional construction
`was not necessary to our analysis on whether to institute a trial. Id. at 12.
`Neither party contests our construction of each limitation, as set forth
`in our Decision on Institution. PO Resp. 7; see generally Reply. Based on
`the full record developed during this proceeding, we find no need to depart
`from our constructions set forth above. We also find no need to construe
`further any terms of the Instituted Claims because further construction is not
`necessary to our analysis herein. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms in
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`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`D. Obviousness based on Ingraham I, Caldwell, and Gerpheide
`Petitioner asserts each of independent claims 40, 61, 83, and 94
`would have been obvious over the combined teachings of Ingraham I,
`Caldwell, and Gerpheide. Pet. 39–49.
`Ingraham I (Ex. 1007) and Ingraham II (Ex. 1008)
`1.
`Ingraham I discloses a capacity response keyboard, which is depicted
`in Figure 1 reproduced below. Ex. 1007 at 2:19–20.
`
`
`Figure 1 shows a perspective view of Ingraham I’s capacity response
`keyboard, consisting of switches that respond to the change in capacity from
`a user touching the switch. Ex. 1007, 1:5–9. Each switch includes a touch
`plate assembly and a control circuit. Id. at 2:28–35, Figs. 2, 3. Each touch
`plate assembly includes a guard band that reduces interference between the
`switches. Id. at 2:46–49, Abstract. When a keyboard user touches the outer
`surface of the switch, the capacity-to-ground for the switch’s touch plate
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`increases. Id. at 3:1–6, 3:21–47. This increase is detected by the switch’s
`touch sensing circuit, which sends an output signal to a microcomputer. Id.
`The ’183 Patent Specification makes several references to Ingraham I,
`including describing Ingraham I as operating at relatively lower frequencies
`than the invention of the ’183 Patent. Ex. 1001, 8:11–14; see also id. at
`3:44–50, 4:3–8, 6:6–16, 18:1–10. According to the ’183 patent:
`The specific touch detection method of the present
`invention has similarities to the devices of U.S. Pat. No.
`4,758,735 and U.S. Pat. No. 5,087,825 [Ingraham I].
`However, significant improvements are offered in the
`means of detection and in the development of an overall
`system to employ the touch switches in a dense array and
`in an improved zero force palm button. The touch
`detection circuit of
`the present
`invention features
`operation at frequencies at or above 50 kHz and preferably
`at or above 800 kHz to minimize the effects of surface
`contamination from materials such a skin oils and water.
`
`
`Id. at 5:43–53.
`
`Ingraham I incorporates by reference certain portions of prior art
`patent Ingraham II, upon which Petitioner relies as meeting certain
`limitations of the Instituted Claims. Pet. 9 (citing Ex. 1007, 3:21–24 as
`incorporating Ingraham II’s control circuit 14 (“A detailed description of
`control circuit 14 is provided in U.S. Pat. No. 4,731,548, issued Mar. 15,
`1988 to Ronald Ingraham, the disclosure of which is hereby incorporated
`herein by reference.”)).
`Caldwell (Ex. 1009)
`2.
`Caldwell discloses a touch pad system, including a touch sensor that
`detects user contact, for use in kitchens. Ex. 1009, 1:6–9, 1:42–44, 2:45–48.
`Caldwell’s touch pad includes “an active, low impedance touch sensor
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`attached to only one side of a dielectric substrate.” Id. at 2:22–23. Figure 6
`of Caldwell is reproduced below.
`
`
`Figure 6 of Caldwell shows a matrix of touch pads comprising a touch
`panel. Id. at 5:60–61. To monitor the touch pads, Caldwell’s system
`sequentially provides an oscillating square wave signal to a row or column
`of touch pads and then sequentially selects columns or rows of sense
`electrodes 24 to sense the signal output from the touch pad. Id. at 4:39–51,
`6:40–63.
`
`Gerpheide (Ex. 1012)
`3.
`Gerpheide discloses a capacitive touch responsive system that detects
`the location of a touch in a single point input device, such as those used to
`provide data input in lieu of a mouse or stylus. Ex. 1012, 1:10–14, 1:19–20,
`2:61–3:12. Figure 2b of Gerpheide is reproduced below.
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`Figure 2b illustrates a cross-sectional view of a touch pad. Id. at
`4:56–57. Gerpheide seeks to solve the problem of reducing electrical
`interference in single point touch pads that use measurements of true
`capacitance to determine location. Id. at 2:21–34. To reduce electrical
`interference regardless of its frequency, Gerpheide varies the oscillator
`signal frequency provided to the touch pad. Id. at Figs. 4, 7, 3:13–18, 6:5–8,
`6:19–26, 8:22–9:33. More specifically, Gerpheide describes varying
`frequencies in a lookup table, selecting a frequency, sending that frequency
`to the entire touchpad thirty-two times in succession, and then selecting a
`new frequency based on an electrical interference measure. Id. at 9:18–33.
`Rationale for Combining Ingraham I, Gerpheide, and
`4.
`Caldwell
`
`With respect to independent claim 40, Petitioner asserts the
`combination of Ingraham I’s microcomputer using Caldwell’s
`sequential scanning to selectively provide each of Gerpheide’s signal
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`output frequencies as meeting the claimed “microcontroller
`selectively providing signal output frequencies to a plurality of small
`sized input touch terminals of a keypad.” Pet. 39. More specifically,
`Petitioner contends that Ingraham I’s microcomputer 80 meets the
`claimed microcontroller and input portions 13 meet the claimed
`“small sized input touch terminals of a keypad.” Id.; see also id. at
`19–20. Relying on Dr. Subramanian’s testimony, Petitioner contends
`that it would have been readily apparent to one of ordinary skill to
`modify the microcomputer and input portions of Ingraham I given the
`teachings of Caldwell such that “rows of input portions 13 would be
`selected sequentially and the oscillator signal provided to the selected
`row.” Id. at 24 (citing Ex. 1002 ¶ 64; Ex. 1009, 6:40–63). According
`to Petitioner, a system so modified would selectively provide the
`oscillator signal frequency to the input touch terminals of a keypad,
`thereby meeting the claimed “selectively providing a signal output
`frequency to each row of the plurality of small sized input touch
`terminals of the keypad.” Id. at 26, 39. The same oscillator signal
`would be sequentially provided to each row of Ingraham I’s input
`portions 13 until all rows are scanned. Id. at 55 (citing Ex. 1009,
`6:40–63, 8:20–23; Ex. 1002 ¶ 132).
`Petitioner relies on Gerpheide as teaching varying the oscillator
`signal frequency provided to an electrode array in order to account for
`electrical interference. Id. at 28 (citing Ex. 1012, 6:5–8, 6:19–26,
`8:22–9:33, Figs. 4, 7; Ex. 1006, 329–30, 333–34). Again relying on
`Dr. Subramanian, Petitioner alleges, “one of ordinary skill in the art
`would have been motivated to incorporate interference negating
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`functionality similar to that described by Gerpheide in the above
`discussed Ingraham I-Caldwell system.” Id. at 28 (citing Ex. 1002,
`¶ 72). Thus, Petitioner contends the system of Ingraham I–Caldwell–
`Gerpheide selectively provides signal output frequencies, as opposed
`to only a single frequency. Id. at 29, 40.
`In its Preliminary Response, Patent Owner asserted that one of
`ordinary skill in the art would not be motivated to combine the
`teachings of Gerpheide with those of Ingraham I and Caldwell.
`According to Patent Owner, “Gerpheide is single touch and therefore
`is concerned about sensing the entire single touch pad, it does not
`sense any individual rows or seek to determine interference between
`multiple touch pads.” Prelim. Resp. 44. Patent Owner’s witness,
`Dr. Cairns, testified that Dr. Subramanian’s testimony on this point is
`erroneous because Gerpheide “is a single touch device that could not
`be combined with either [cited reference] to make a working device.”
`Ex 2002 ¶ 102.
`In our Decision on Institution, we determined Dr. Cairns’
`testimony conflicted directly with Dr. Subramanian’s testimony on
`this issue. Dec. on Inst. 23. We, therefore, resolved in Petitioner’s
`favor at that stage of the proceeding the genuine issue of material fact
`as to whether one of ordinary skill in the art would have looked to
`Gerpheide to combine its teaching of selectively providing
`frequencies with Ingraham I and Caldwell. Id. (citing 37 C.F.R
`§ 42.108(c)).
`Having completed trial in the matter, Petitioner must show by a
`preponderance of the evidence that a person of ordinary skill in the art
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`would have been motivated to combine Gerpheide with Ingraham I
`and Caldwell with a reasonable expectation of success. We determine
`Petitioner has failed to carry this burden for the reasons that follow.
`Reasons to Combine Ingraham I, Gerpheide, and
`a)
`Caldwell
`During trial, Patent Owner argues that an artisan of ordinary
`skill would not look to Gerpheide when addressing the problem faced
`by the ’183 patent because Gerpheide “does not disclose a keypad, is
`not compatible with keypads, and was directed to reducing electrical
`interference on a single-point touchpad.” PO Resp. 23 (citing Ex.
`2010 ¶¶ 96–106). Patent Owner and Dr. Cairns direct our attention to
`additional reference U.S. Patent No. 4,639,720 (“Rympalski”),1 which
`disparages single point touch pads because they “suffer from a lack of
`versatility (they are capable of locating only one coordinate point at a
`time) and consume considerable power and involve complex
`hardware, thereby reducing their cost effectiveness and practical
`utility.” Id. at 24 (citing Ex. 2012, 2:7–17; Ex. 2010 ¶¶ 96–101).
`Petitioner replies that a person of skill in the art would be
`motivated to combine Gerpheide with Ingraham I and Caldwell
`because Gerpheide addresses capacitive touch responsive systems.
`Reply 5–6 (citing Ex.1002 ¶¶ 70–71). Petitioner contends that Patent
`Owner’s reliance on Rympalski is misplaced because Rympalski “was
`filed in 1981, more than a decade before Gerpheide’s filing date.” Id.
`at 6–7 (citing Ex.1017 ¶¶ 5–6). Petitioner reiterates that, according to
`
`
`1 Dr. Cairns identifies that Gerpheide cites U.S. Patent No. 5,305,017
`(“Gerpheide ’017”), which in turn cites Rympalski. Ex. 2010 ¶ 98.
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`Dr. Subramanian, an ordinarily skilled artisan would have looked to
`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.”
`Id. (citing Pet. 27–29; Ex. 1002 ¶¶ 69–72). Petitioner states, “a
`POSITA would have looked to the inter-related teachings of all three
`references regardless of whether they are single-point touch pads or
`not to create a capacitive touch responsive system given the
`advantages of the combined Ingraham I-Caldwell-Gerpheide system.”
`Id. at 8 (citing Ex. 1002 ¶¶ 61, 65, 66, 70, 72; Ex. 1017 ¶ 8).
`On this evidentiary record, we are not persuaded one of
`ordinary skill in the art would have combined Gerpheide with
`Ingraham I and Caldwell to arrive at claim 40. Gerpheide is related to
`a single point input device, such as those used to provide data input in
`lieu of a mouse or stylus. Ex. 1012, 1:10–14, 1:19–20, 2:61–3:12.
`Like the ’183 patent, Ingraham I and Caldwell disclose capacitive
`response keypads. Ex. 1007. 1:5–9, 2:19–20; Ex. 1009, 1:6–9, 1:42–
`44, 2:45–48. The ’183 patent describes monitoring electrical
`interference across a single electrode and varying the frequency of an
`oscillator frequency based on an interference measurement. Ex. 1001,
`6:13–18, 8:22–9:33. Conversely, the ’183 patent describes “a
`multiple touch pad circuit” including “an array of touch circuits.” Id.
`at 18:34–46. The ’183 patent seeks to overcome the problem of
`unintended actuation of these touch circuits when such circuits are
`placed in dense arrays. Id. at 3:65–4:3. Recognizing guard rings and
`sensitivity adjustments “have gone a considerable way in allowing
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`touch switches to be spaced in comparatively close proximity,” the
`’183 patent addresses the remaining problem of surface contamination
`across the keypad. Id. at 4:14–18. The considerations described in
`the ’183 patent, Ingraham I, and Caldwell related to the close
`proximity of touch circuits in a keypad are wholly absent from
`Gerpheide.
`Petitioner relies on Dr. Subramanian’s testimony that an
`ordinarily skilled artisan would have looked to 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.” Reply 7.
`Dr. Subramanian’s testimony, however, is conclusory on this point.
`See Ex. 1002 ¶¶ 69–72. The relevant portion of Dr. Subramanian’s
`testimony offers only that one would have found incorporating
`Gerpheide “to be a predictable and common sense implementation to
`allow the combined Ingraham I-Caldwell system to reject electrical
`interference regardless of its frequency without expensive nulling
`circuitry.” Ex. 1002 ¶ 72. It is not sufficient to demonstrate that each
`of the components in a challenged claim is known in the prior art. See
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent
`composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in
`the prior art.”). Although Petitioner has identified in Gerpheide
`“teachings regarding electrical interference nullification in touch
`systems” (Reply 7), Petitioner and Dr. Subramanian fail to address
`fully—in the face of Petitioner’s evidence to the contrary, including
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`Dr. Cairn’s testimony and Rympalski—why an ordinarily skilled
`artisan would look to such teachings in Gerpheide with a reasonable
`expectation of success for combining them with Ingraham I and
`Caldwell.
`Petitioner’s contention that one “would have looked to the
`inter-related teachings of all three references regardless of whether
`they are single-point touch pads or not” is similarly insufficiently
`supported by Dr. Subramanian’s testimony. Reply 8 (citing Ex. 1002
`¶¶ 61, 65, 66, 70, 72; Ex. 1017 ¶ 8). The majority of
`Dr. Subramanian’s testimony cited by Petitioner is unrelated to
`Gerpheide. Ex. 1002 ¶¶ 61, 65, 66. As discussed above, the relevant
`portion of Dr. Subramanian’s testimony offers only that one would
`have found incorporating Gerpheide “to be a predictable and common
`sense implementation.” Ex. 1002 ¶ 72; see also Ex. 1017 ¶ 8.
`
`Responding to Petitioner’s position, Patent Owner offers the
`testimony of Dr. Cairns that the combination is not predictable and not
`one that would have been made by a skilled artisan. Ex. 2010 ¶¶ 102–
`103. Dr. Cairns relies on the ’183 Patent’s statements that its
`detection circuit “operates at a higher frequency than prior art touch
`sensing circuits,” which “is not a benign choice” relative to the prior
`art detection circuits. Id. ¶ 103 (quoting Ex. 1001, 8:9–14).
`Dr. Cairns further relies on the ’183 Patent’s description of testing
`required to identify ideal frequency ranges as further evidence that the
`combination of prior art elements is not predictable and not one that
`would have been made by a skilled artisan. Id. ¶¶ 103–104. We
`credit the testimony of Dr. Cairns on this point over the testimony of
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`Dr. Subramanian because Dr. Cairns’ testimony is more fully
`developed and is supported by record evidence. For instance, Dr.
`Subramanian offers no explanation of why one would have found
`incorporating Gerpheide’s monitoring of oscillator frequencies,
`calculation of new frequencies, and use of newly-calculated
`frequencies “to be a predictable and common sense implementation.”
`Ex. 1002 ¶ 72; see also Ex. 1017 ¶ 8. Rather, Dr. Subrarmanian
`recites a potential benefit of the combination—namely “to allow the
`combined Ingraham I-Caldwell system to reject electrical interference
`regardless of its frequency without expensive nulling circuitry.” Id.
`Conversely, Dr. Cairns proffers the testing described in the ’183
`patent as evidence that identifying the ideal frequency ranges for use
`in the claimed invention was not a predictable combination of prior art
`elements. Ex. 2010 ¶¶ 103–104.
`Patent Owner’s position is further supported by Rympalski,
`which disparages single point touch pads, thereby demonstrating a
`distinction recognized in the art between single point and multi point
`capacitive touch responsive systems. Petitioner counters that
`Rympalski is not contemporaneous with Gerpheide, as Patent Owner
`contends, because it “was filed in 1981, more than a decade before
`Gerpheide’s filing date” and thus is not reflective of the state of the
`art at time of filing the ’183 patent. Reply 6. This assertion, however,
`supports Patent Owner’s argument that the art evinces a long-standing
`distinction between single point and multi point capacitive touch
`responsive systems. Petitioner offers no evidence that this distinction
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