Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 12
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`Entered: October 19, 2016
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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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`Paper 12
`
`Entered: October 19, 2016
`
`
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00908
`Patent 5,796,183
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`
`I.
`INTRODUCTION
`Petitioner Samsung Electronics Co., Ltd. filed, on April 15, 2016, a
`request for 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 (the “Challenged Claims”) of
`U.S. Patent No. 5,796,183 (“the ’183 patent”). Paper 2 (“Petition” or
`“Pet.”). On July 20, 2016, Patent Owner UUSI, LLC d/b/a Nartron filed a
`Preliminary Response. Paper 10 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless it is determined that there is “a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Based on the information presented in the Petition and
`Preliminary Response, we are persuaded that there is a reasonable likelihood
`Petitioner would prevail with respect to claims 40, 41, 43, 45, 47, 48, 61–67,
`69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102. We are not persuaded,
`however, that there is a reasonable likelihood Petitioner would prevail with
`respect to claims 37–39.
`Accordingly, we institute 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 on the
`grounds specified below. Our factual findings and conclusions at this stage
`of the proceeding are based on the evidentiary record developed thus far.
`This is not a final decision as to patentability of claims for which inter
`partes review is instituted. Further, we decline to institute inter partes
`review of claims 37–39 for the reasons set forth below.
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`II.
`BACKGROUND
`The ’183 patent (Ex. 1001)
`A.
`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 of capacitive touch switches use
`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
`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.
`The ’183 patent recognizes that placing the capacitive touch switches
`described above 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 to a point where the operator’s finger must entirely overlap a touch
`terminal. Id. at 4:10–14. “Although these methods (guard rings and
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`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.
`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.
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014 (“Reexam
`2”). Claims 37, 38, and 39 were added to the ’183 Patent during Reexam 1
`and all other Challenged Claims were added during Reexam 2. See
`generally Exs. 1005 and 1006.
`B.
`Illustrative Claims
`Petitioner presents its arguments concerning Ground I primarily in the
`context of independent claim 37. Pet. 39–60 (referring to Petitioner’s
`analysis of claim 37 and its dependent claims 38 and 39). Patent Owner
`similarly presents its arguments primarily in the context of independent
`claim 37. Prelim. Resp. 33. Claims 37 and 40 illustrate the claimed subject
`matter and are reproduced below with bracketed material added.
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`37. A capacitive responsive electronic switching circuit for a
`controlled device comprising:
`[37a] an oscillator providing a periodic output signal
`having a predefined frequency, wherein an oscillator voltage is
`greater than a supply voltage;
`[37b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a closely spaced array of input
`touch terminals of a keypad, the input touch terminals
`comprising first and second input touch terminals;
`[37c] the first and second touch terminals defining areas
`for an operator to provide an input by proximity and touch; and
`[37d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said first and second 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 first and second touch
`terminals when proximal or touched by the operator to provide
`a control output signal for actuation of the controlled device,
`said detector circuit being configured to generate said control
`output signal when the operator is proximal or touches said
`second touch terminal after the operator is proximal or touches
`said first touch terminal.
`
`40. A capacitive responsive electronic switching circuit
`comprising:
`[40a] an oscillator providing a periodic output signal
`having a predefined frequency;
`[40b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a plurality of small sized input
`touch terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
`output frequency to each row of the plurality of small sized
`input touch terminals of the keypad;
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`[40c] the plurality of small sized input touch terminals
`defining adjacent areas on a dielectric substrate for an operator
`to provide inputs by proximity and touch; and
`[40d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said input touch terminals, said detector circuit being
`responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said touch terminals when
`proximal or touched by the operator to provide a control output
`signal,
`[40e] wherein said predefined frequency of said oscillator
`and said signal output frequencies are selected to decrease a
`first impedance of said dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`Cited References
`C.
`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”).
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`4. Wheeler et al., U.S. Patent No. 5,341,036, issued Aug. 23, 1994
`(Ex. 1015, “Wheeler”).
`Proposed Grounds of Unpatentability
`D.
`Petitioner advances two grounds of unpatentability under 35 U.S.C.
`§ 103(a) (Pet. 3):
`References
`
`Challenged Claims
`
`Ingraham I, Caldwell,
`Gerpheide
`
`37–41, 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
`
`
`Additional Evidence
`E.
`Petitioner further supports its challenges with a Declaration by Dr.
`Vivek Subramanian (Ex. 1002). In addition to filing a preliminary response,
`Patent Owner supports its assertions in response to Petitioner’s challenges
`with a Declaration by Dr. Darran Cairns (Ex. 2002).
`F.
`Related Proceedings
`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.
`
`
`III. CLAIM CONSTRUCTION
`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
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`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 Challenged
`Claims. Pet 12. To the extent we construe a particular term, Petitioner urges
`that we adopt the constructions it set forth in the District Court litigation. Id.
`Patent Owner seeks construction of the three sets of claim limitations
`discussed below.
`A.
`The supply voltage limitations
`Patent Owner seeks construction of the limitations: “oscillator
`voltage is greater than a supply voltage,” as recited in independent claim 37
`and “peak voltage of the signal output frequencies is greater than a supply
`voltage” as recited in each of independent claims 61, 83, and 94
`(collectively, the “supply voltage limitations”). Prelim. Resp. 14–17. Patent
`Owner proposes the following construction of the supply voltage limitations:
`“the oscillator, and its supply signal and periodic output signal having a
`predefined frequency, must be within the capacitive responsive electronic
`switching circuit, not outside of the switching circuit such as an external
`commercial power supply from the wall.” Id. at 14.
`Petitioner did not seek construction of the supply voltage limitations
`in the District Court litigation. See Pet. 12–15.
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`Independent claim 37 recites, in relevant part, “an oscillator providing
`a periodic output signal having a predefined frequency, wherein an
`oscillator voltage is greater than a supply voltage” (emphasis added). We
`determine, based on the context of the supply voltage limitation in this
`claim, that one of ordinary skill in the art would understand the term
`“oscillator voltage” as referring to the “periodic output signal” and the term
`“supply voltage” as referring to a supply voltage of the oscillator. Such an
`understanding is consistent with the Specification, which discloses voltage
`regulator 100 provides supply voltages 104, 105, and 106 to oscillator 200.
`Ex 1001, 11:64–12:29, Figs. 4, 5. Contrary to Patent Owner’s contention,
`the claim language does not restrict the supply voltage to exclude an external
`commercial power supply. Rather, the Specification teaches:
`It will be apparent to those skilled in the art that various
`components of voltage regulator 100 may be added or
`excluded depending upon the source of power available
`to power the oscillator 200. For example, if the available
`power is a 110 V AC 60 Hz commercial power line, a
`transformer may be added to convert the 110 V AC
`power to 24 V AC. Alternatively, if a DC battery is used,
`the AC/DC convertor among other components may be
`eliminated.
`
`
`Id. at 13:23–31. Thus, the Specification discloses supply voltages of
`oscillator 200 including batteries and commercial power lines. Because
`Patent Owner’s proposed construction is contrary to this disclosure, we are
`not persuaded by Patent Owner’s arguments and do not adopt Patent
`Owner’s construction of the supply voltage limitation recited in claim 37.
`Independent claims 61, 83, and 94 each recite in relevant part, “a
`microcontroller using the periodic output signal from the oscillator, the
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`microcontroller selectively providing signal output frequencies . . . wherein
`a peak voltage of the signal output frequencies is greater than a supply
`voltage” (emphasis added). We determine, based on the context of the
`supply voltage limitations in these claims, that one of ordinary skill in the art
`would understand the term “supply voltage” as referring to a supply voltage
`of the claimed microcontroller. Contrary to Patent Owner’s contention, the
`claim language does not restrict the supply voltage to exclude an “external
`commercial power supply.” Indeed, dependent claims 64, 90, and 101 each
`recite “wherein the supply voltage is a battery supply voltage.” Because
`Patent Owner’s proposed construction seeking to exclude external supply
`voltages is contrary to the explicit language of these dependent claims, we
`are not persuaded by Patent Owner’s arguments and do not adopt Patent
`Owner’s construction of the supply voltage limitations recited in claims 61,
`83, and 94.
`The input touch terminals limitations
`B.
`Patent Owner seeks construction of the limitations: “the “closely
`spaced array of input touch terminals of a keypad,” as recited in each of
`independent claims 37, 83, and 94 and “small sized input touch terminals of
`a keypad,” as recited in each of independent claims 40 and 61 (collectively,
`the “input touch terminals limitations”). Prelim. Resp. 9–14. Patent Owner
`proposes the following construction of the input touch limitations: “touch
`terminals that are closely-spaced or small-sized without requiring physical
`structures to isolate the touch terminals.” Id. at 9.
`We do not adopt Patent Owner’s construction. The plain language of
`the Challenged Claims does not foreclose physical structures isolating
`adjacent touch terminals. The Specification recites:
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`The use of a high frequency in accordance with the
`present invention provides distinct advantages for circuits
`such as the multiple touch pad circuit of the present
`invention due to the manner in which crosstalk is
`substantially reduced without requiring any physical
`structure to isolate the touch terminals. Further, the
`reduction in crosstalk afforded by the present invention,
`allows the touch terminals in the array to be more closely
`spaced together.
`
`
`Ex 1001, 18:66–19:6. This passage indicates a skilled artisan would be able
`to remove the isolating structures and, nevertheless, use the present
`invention in order to space the touch terminals close together without
`creating crosstalk. This passage, however, does not require that the touch
`terminals must exclude isolating structures, and Patent Owner’s construction
`seeks to create such a requirement. We do not import into the claim
`language non-limiting statements from the Specification such as the
`disclosure addressed herein. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
`1359, 1369 (Fed. Cir. 2004). Further, we note the “use of a high
`frequency”—the very element that enables one to exclude physical isolating
`structures—is not recited in independent claims 37, 40, 61, 83, and 94.
`Accordingly, we are not persuaded by Patent Owner’s arguments and do not
`adopt Patent Owner’s construction seeking to require that the input touch
`terminal limitations of independent claims 37, 40, 61, 83, and 94 exclude
`physical isolating structures.
`C.
`“selectively providing signal output frequencies”
`Patent Owner seeks construction of the limitation “selectively
`providing signal output frequencies,” as recited in each of independent
`claims 37, 40, 61, 83, and 94. Prelim. Resp. 17–19. Patent Owner proposes
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`the following construction for this limitation: “selectively sending signals
`selected from various frequencies from a microcontroller to the input touch
`terminals.” Id. at 17–18.
`We decline to construe this limitation as Patent Owner contends
`because Patent Owner fails to explain persuasively why such a construction
`would clarify the plain and ordinary meaning of the claim language. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(explaining that only claim terms in controversy need to be construed, and
`only to the extent necessary to resolve the controversy). To the extent Patent
`Owner argues the scope of this limitation precludes Petitioner’s prior art
`contentions, we address these arguments in Section IV.B.2.b. below.
`Thus, having reviewed Patent Owner’s arguments and evidence, we
`do not agree with Patent Owner’s constructions of the supply voltage
`limitations, the input touch terminal limitations, or the limitation “selectively
`providing signal output frequencies.” Although we address Patent Owner’s
`proposed constructions of these limitations above, we do not construe further
`these limitations because additional construction is not necessary to our
`analysis on whether to institute a trial. Vivid Techs., 200 F.3d at 803.
`
`
`IV. ANALYSIS
`Petitioner contends claims 37–41, 43, 45, 61, 64–67, 69, 83, 85, 86,
`88, 90, 91, 94, 96, 97, 99, 101, and 102 would have been obvious over the
`combination of Ingraham I, Caldwell, and Gerpheide. Pet. 3. Petitioner also
`contends that claims 47, 48, 62, 63, and 84 would have been obvious over
`Ingraham I, Caldwell, Gerpheide, and Wheeler. Id. For the reasons that
`follow, we are persuaded that Petitioner has demonstrated a reasonable
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`likelihood of prevailing on its challenges with respect to claims 40, 41, 43,
`45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102.
`Petitioner has not demonstrated, however, a reasonable likelihood of
`prevailing with respect to claims 37–39.
`A.
`Overview of Cited References
`1.
`Ingraham I (Ex. 1007) and Ingraham II (Ex. 1008)
`Ingraham I discloses a capacity response keyboard consisting of
`switches that respond to the change in capacity from a user touching the
`switch. Ex. 1007 at 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 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
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`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 Challenged Clams. 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.”)).
`2.
`Caldwell (Ex. 1009)
`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
`attached to only one side of a dielectric substrate.” Id. at 2:22–23. 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.
`3.
`Gerpheide (Ex. 1012)
`Gerpheide discloses a capacitive touch responsive system that detects
`the location of a touch. Ex. 1012, 1:10–14, 2:61–3:12. To reduce electrical
`interference regardless of its frequency, Gerpheide varies the oscillator
`signal frequency provided to an array of input touch terminals. Id. at Figs. 4,
`7, 6:5–8, 6:19–26, 8:22–9:33.
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`4. Wheeler (Ex. 1015)
`Wheeler describes a two-hand industrial machine operator control
`station having capacitive proximity switches. Ex. 1015, 4:40–42.
`According to Wheeler, safety considerations in certain environments require
`a machine operator to activate two switches in sequence in order to operate
`an industrial machine. Id. at 1:7–18. Wheeler replaces the palm button
`switches of such industrial machines with capacitive proximity switches, so
`that the operator must activate two capacitive proximity switches in
`sequence within a certain time interval to operate an industrial machine. Id.
`at 1:63–2:5, 6:10–46.
`B.
`Ground I: Ingraham I, Caldwell, and Gerpheide
`Below, we address the parties’ arguments first in the context of claim
`37 and then in the context of the other Challenged Claims.
`1.
`Asserted Obviousness of Claims 37–39
`
`Petitioner’s analysis, as supported by the Subramanian Declaration,
`demonstrates where Petitioner contends each element of claim 37 is taught
`or suggested in Ingraham I, Caldwell, and Gerpheide. Pet. 15–36. In
`particular, Petitioner contends Ingraham I’s power supply 70 generates a
`15V supply voltage for microcomputer 80. Pet. 19; Ex. 1002 ¶ 50.
`According to Petitioner, this 15V supply voltage for microcomputer 80
`meets the supply voltage limitation of claim 37. Id. The supply voltage
`limitation of claim 37, however, refers to a supply voltage of the claimed
`oscillator, not the claimed microcontroller. As discussed above (Section
`III.A.), one of ordinary skill in the art would understand the term “supply
`voltage” in claim 37, read in the context of the entire claim, refers to the
`supply voltage of the oscillator. Such an understanding is consistent with
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`the Specification, which discloses that voltage regulator 100 provides supply
`voltages 104, 105, and 106 to oscillator 200. See, e.g., Ex 1001, 11:64–
`12:29, Figs. 4, 5. Because Petitioner fails to identify in the cited references a
`teaching or suggestion of the supply voltage limitation as properly
`construed, we determine Petitioner has not demonstrated a reasonable
`likelihood of prevailing on its obviousness challenge to independent claim
`37 and its dependent claims 38 and 39.
`2.
`Asserted Obviousness of Claim 40
`
`Petitioner’s analysis, as supported by the Subramanian
`Declaration, demonstrates where each element of claim 40 is taught or
`suggested in Ingraham I, Caldwell, and Gerpheide. Pet. 39–49. More
`specifically, Petitioner refers to its analysis of element 37a and
`contends that Ingraham I and Caldwell teach or suggest the oscillator
`of element 40a. Id. at 39. Unlike element 37a, element 40a does not
`recite a supply voltage limitation, and thus Petitioner’s analysis of
`element 40a does not suffer the deficiency described above with
`regard to element 37a. See supra Section IV.B.1.
`With respect to element 40b, Petitioner refers to its analysis of
`element 37b and 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.” Pet. 39 (citing 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
`
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`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 further asserts that
`Gerpheide teaches 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 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.
`Petitioner refers to its analysis of element 37c and contends that
`Ingraham I’s input portions 13 meet the input touch terminals of
`element 40c because each input portion 13 defines an area of
`dielectric member 26 where the user can provide an input by
`proximity and touch. Id. at 30 (citing Ex. 1007 at 2:64–67, 3:1–6,
`3:30–36), 41.
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`IPR2016-00908
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`
`As to element 40d, Petitioner refers to its analysis of element
`37d and contends that each of Ingraham I’s touch sensing circuits
`within input portions 13—as modified in light of Caldwell to the
`oscillator signal via the microcontroller—meets this limitation. Id. at
`32–35, 41–42.
`Petitioner contends the following limitations of element 40e constitute
`statements of intended use and, therefore, “should not be given any
`patentable weight given that claim 40 is an apparatus claim”: “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 “to prevent inadvertent generation of the control
`output signal.” Id. at 43, 48. Nevertheless, Petitioner asserts that the
`microcontroller of a combined Ingraham I-Caldwell-Gerpheide system
`selectively varies the oscillator signal frequency provided to the input
`portions 13. Id. at 42–43. Relying on Dr. Subramanian’s testimony,
`Petitioner further contends that:
`[O]ne of ordinary skill in the art would have been motivated to
`configure the oscillator of the combined Ingraham I-Caldwell-
`Gerpheide system to provide a frequency between 100 kHz and
`200 kHz, or a frequency greater than 200 kHz because such a
`high frequency range would have provided a low impedance
`touch sensor.
`
`
`Id. at 43–44 (citing Ex. 1002 ¶¶ 96–97; Ex. 1009, 4:39–50, 6:41–43).
`Thus, according to Petitioner, it would have been obvious to one of
`ordinary skill to optimize and select an oscillator frequency to
`“decrease a first impedance of said dielectric substrate relative to a
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`IPR2016-00908
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`second impedance of any contaminate that may create an electrical
`path.” Id. at 44–47. Again relying on Dr. Subramanian’s testimony,
`Petitioner also contends that Ingraham I teaches or suggests the
`claimed “detector circuit compares a sensed body capacitance change
`to ground proximate an input touch terminal to a threshold level”
`because “when a user touches or is proximal to the input portion 13,
`the user’s body capacitance to ground 42 decreases the voltage level
`on base 52 of transistor 50, which translates into an increase in the
`voltage difference between the emitter and base (VEB).” Id. at 47
`(citing Ex. 1007, 3:34–39; Ex. 1002 ¶ 100). Thus, according to
`Petitioner and Dr. Subramanian:
`[O]ne of ordinary skill in the art would have found it obvious to
`configure the circuitry used in the combined Ingraham I-
`Caldwell-Gerpheide system as discussed above to take into
`account inadvertent touch detections, including any caused by
`contaminates, position of a user’s finger, etc., by using
`threshold values that refine the sensitivity of the touch
`detections for particular applications and environments.
`
`
`Id. at 48–49 (citing Ex. 1002 ¶ 101).
`We have reviewed the information provided by Petitioner,
`including the relevant portions of the supporting Subramanian
`Declaration. We decline Petitioner’s suggestion to disregard the
`“intended use” limitations within element 40e and, instead, accord all
`limitations of claim 40 patentable weight. Nevertheless, having
`reviewed the information provided by Petitioner and based on the
`record at this stage of the proceedings, we are persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing on
`this challenge.
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`
`Referring back to its analysis of claim 37, Patent Ow
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