Paper No. 16
`Filed: November 4, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
`
`APPLE, INC.
`Petitioner
`
`v.
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`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`____________________
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`Case IPR2019-00358
`Patent No. 5,796,183
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`____________________
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`PATENT OWNER RESPONSE
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`SAMSUNG EXHIBIT 1019
`Samsung v. Nartron
`IPR2016-00908
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`Case IPR2019-00358
`Patent No. 5,796,183
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 5
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`A.
`
`B.
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`The ’183 Patent ..................................................................................... 5
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`The Cited References ............................................................................ 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
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`6.
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`Chiu ............................................................................................. 8
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`Schwarzbach ............................................................................. 10
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`Lawson ...................................................................................... 11
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`Meadows ................................................................................... 12
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`Ingraham ’548 ........................................................................... 12
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`Tucker ....................................................................................... 13
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`III. CLAIM CONSTRUCTION .......................................................................... 13
`
`A.
`
`B.
`
`Claim Construction Standard .............................................................. 13
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`“Selectively Providing Signal Output Frequencies” ........................... 14
`
`1.
`
`2.
`
`3.
`
`The Federal Circuit Issued an Explicit Claim
`Construction, Which Is Binding on the Board .......................... 15
`
`Adopting the Federal Circuit’s Construction Would Not
`Cause the Claims to Lack Written Description Support ........... 19
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`The Federal Circuit’s Construction Is Legally Correct ............ 28
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`IV. LEGAL STANDARDS ................................................................................. 31
`
`V.
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`ARGUMENT ................................................................................................. 32
`
`A.
`
`B.
`
`C.
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`[All Grounds] – The Cited References Do Not Disclose
`“Selectively Providing Signal Output Frequencies” ........................... 32
`
`[All Grounds] – The Cited References Do Not Disclose
`“Providing a Periodic Output Signal Having a Predefined
`Frequency” .......................................................................................... 34
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`[All Grounds] – The Cited Art Does Not Disclose “Selectively
`Providing Signal Output Frequencies to a Closely Spaced
`Array” .................................................................................................. 38
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`D.
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`[All Grounds] – Apple Has Not Shown a Motivation to
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`
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`Combine Schwarzbach and Chiu, or a Reasonable Expectation
`of Success ............................................................................................ 40
`
`[Claims 37-39] – The Cited References Do Not Disclose
`“Wherein an Oscillator Voltage is Greater than a Supply
`Voltage” ............................................................................................... 44
`
`[Claims 94, 96-99, 101-104] - The Cited Art Does Not Disclose
`“Wherein a Peak Voltage of the Signal Output Frequencies is
`Greater than a Supply Voltage” .......................................................... 47
`
`[Claim 101] – The Cited Art Fails to Disclose, or Render
`Obvious, “Wherein the Supply Voltage is a Battery Supply
`Voltage” ............................................................................................... 49
`
`[Ground 1B] – Apple Has Not Proven Obviousness of Claims
`38-39, 104, or 115-116 Over Chiu, Schwarzbach and Lawson .......... 51
`
`[Ground 1C] – Apple Has Not Proven Obviousness of Claims
`97-99 or 107-109 Over Chiu, Schwarzbach and Meadows ................ 52
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`[Ground 1D] – Apple Has Not Proven Obviousness of Claim
`102 over Chiu, Schwarzbach and Ingraham ’548 ............................... 57
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`[Ground 1E] – Apple Has Not Proven Obviousness of Claim
`103 Over Chiu, Schwarzbach and Tucker ........................................... 58
`
`E.
`
`F.
`
`G.
`
`H.
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`I.
`
`J.
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`K.
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`VI. CONCLUSION .............................................................................................. 60
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`EXHIBITS
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`UUSI-2001
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`Declaration of Lawrence M. Hadley in support of patent
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`owner’s motion for pro hac vice admission
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`
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`UUSI-2002
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`Declaration of Dr. Darran Cairns in support of patent owner
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`preliminary response
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`
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`UUSI-2003
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`Deposition of Phillip D. Wright, Ph.D.
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`
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`UUSI-2004
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`Declaration of Dr. Darran Cairns in support of patent owner
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`response
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`I.
`
`INTRODUCTION
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`The ’183 Patent provided an important improvement over the prior art: i.e.,
`
`the ability to bring capacitive touch terminals very close together, while rejecting
`
`contamination-induced crosstalk between adjacent terminals. This improvement
`
`supplied a key foundation for the modern proliferation of capacitive touchscreens in
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`mobile phones, tablets, and other devices. The inventors of the ’183 Patent—Byron
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`Hourmand, John Washeleski, and Stephen Cooper—conducted extensive empirical
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`research to develop the theoretical and practical framework for rejection of
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`contamination-induced crosstalk in closely-spaced capacitive touch terminals. See
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`Ex. 1001 at 8:9-11:60. The inventors incorporated that research into a novel, highly
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`effective, capacitive-responsive electronic switching circuit. Without the inventors’
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`contributions, the modern “boom” in high-density capacitive touchscreens would
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`not have been possible.
`
`In response to Apple’s Petition, the Board instituted review, because it found
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`a “reasonable likelihood” that Apple would prevail in showing obviousness of “at
`
`least one” of, but not all of, challenged claims 37-39, 94, 96-99, 101-109, and 115-
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`1161 of Nartron’s U.S. Patent No. 5,796,183 (“the ’183 Patent”). See Paper 12 at 1.
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`1 Page 1 of Apple’s Petition identifies the “challenged claims” as “claims 37-39, 94,
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`96-99, 101-109, and 115-117.” Paper 2 at 1 (emphasis added). However, Apple
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`presented no argument as to why claim 117 is obvious over the cited references.
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`As the Board explained in its Institution Decision, the Board found no
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`reasonable likelihood that Apple would prevail in showing obviousness of:
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`• Claim 37 over Chiu and Schwarzbach (id. at 53);
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`• Claims 38-39 over Chiu, Schwarzbach and Lawson (id. at 62); and
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`• Claims 97-99, 107-109 over Chiu, Schwarzbach and Meadows (id. at 61).
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`The Board’s findings on these claims were correct, for at least the reasons
`
`stated. Thus, the Board’s Final Written Decision should confirm that Apple failed to
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`prove obviousness of these claims by a preponderance of the evidence.
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`In contrast, the Board found a reasonable likelihood that Apple would prevail
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`in showing obviousness of:
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`• Claims 105 and 106 over Chiu (Paper 12 at 53);
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`• Claims 94, 96 and 101 over Chiu and Schwarzbach (id.);
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`• Claims 104, 115 and 116 over Chiu and Lawson, or over Chiu,
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`Schwarzbach and Lawson (id. at 64);
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`• Claim 102 over Chiu, Schwarzbach and Ingraham ’548 (id. at 65); and
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`• Claim 103 over Chiu, Schwarzbach and Tucker (id. at 66).
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`As to these claims, the Board’s findings depended on its construction of
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`“selectively providing signal output frequencies,” to “not require the microcontroller
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`Thus, Apple has not actually challenged claim 117.
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`to select signal output frequencies from multiple available frequencies.” Paper 12 at
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`32 (emphasis in original).
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`The Board’s construction directly conflicts with the Federal Circuit’s recent
`
`construction of the same term in Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x
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`692 (Fed. Cir. 2019). In its published opinion, the Federal Circuit construed
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`“selectively providing signal output frequencies” to mean “‘provid[ing]’ a
`
`frequency, selected from multiple possible frequencies, to the entire touch pad.” Id.
`
`at 697 (emphasis added). Although issued in a different case, the Federal Circuit’s
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`construction of “selectively providing signal output frequencies” is now binding on
`
`the Board. See, e.g., Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2014
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`WL 1645838, at *3 (N.D. Ill. Apr. 24, 2014).
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`Applying the Federal Circuit’s binding construction, Apple must show that
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`the cited combinations of references disclose “providing a frequency, selected from
`
`multiple possible frequencies, to the entire touch pad.” Samsung, 775 F. App’x at
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`697. Apple cannot do so with its cited combinations of references.
`
`Chiu, Apple’s primary reference, does not disclose selecting a frequency from
`
`multiple possible frequencies. Nor does Schwarzbach, Ingraham, Tucker, or
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`Lawson. While Meadows discloses random scan frequencies, it does not disclose
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`“selectively providing” a frequency from multiple frequencies. Further, the Board
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`correctly found that Apple “has not explained adequately how a skilled artisan would
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`have made the proposed combination of Chiu and Meadows.” Paper 12 at 59.
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`Apple’s failure cannot be cured with new evidence or argument. See Intelligent Bio-
`
`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Nor can
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`Apple offer new combinations with Meadows. See Sirona Dental Sys. GmbH v.
`
`Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018). Since Apple’s Petition
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`fails to show that “providing a frequency, selected from multiple possible
`
`frequencies, to the entire touch pad” was obvious over the cited prior art, the Petition
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`fails, and the Board’s Final Written Decision should confirm that Apple failed to
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`prove obviousness of the instituted claims.
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`Even setting aside Apple’s inability to prove obviousness under the Federal
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`Circuit’s claim construction, Apple’s petition still fails. First, Apple’s proposed
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`combinations lack several other claim limitations. Second, Apple fails to offer
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`evidence establishing a motivation to combine. Finally, Apple fails to show that a
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`Person of Ordinary Skill in the Art (“POSITA”) would have reasonably expected the
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`proposed combinations to work in achieving the claimed invention. For these
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`reasons as well, the Board’s Final Written Decision should confirm that Apple failed
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`to prove obviousness of any challenged claim by a preponderance of the evidence.
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`II. BACKGROUND
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`A. The ’183 Patent
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`The ’183 patent addresses the problem of unintended actuation of small touch
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`terminals in capacitive-responsive switching circuits—providing the foundation
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`upon which today’s touchscreen technology is built. Ex. 2002, ¶ 15. Capacitive-
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`response switching circuits, in contrast to manual switches, can be used in “zero
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`force” touch switches. These switches have no moving parts and do not require direct
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`contact to switch loads. Ex. 1001 (2:39-41). “Rather, these switches operate by
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`detecting the operator’s touch and then use solid state electronics to switch the
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`loads.” Id., 2:41-44. Zero force touch switches in touchpad arrays make use of a
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`human operator’s capacitance, by detecting the change in capacitive coupling
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`between a touch terminal and ground caused by the operator’s touch. Id., 3:44-46,
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`53-56. A human operator need not come into conductive contact with the touch
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`terminal, but instead can activate the switch when in close proximity. Id., 3:57-59.
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`Capacitive response circuits are susceptible to unintended actuation from
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`environmental conditions, such as surface contamination. Id., 4:18-24. For instance,
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`when an electrically-conductive contaminant path is present on the surface of a
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`touchpad array, connecting two adjacent touch terminals, a touch of one terminal
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`may register as a touch of the other terminal, frustrating the user. Id., 4:10-27.
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`To solve this problem, the ’183 Patent teaches using an oscillator providing a
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`periodic output signal, a microcontroller that selectively provides signal output
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`frequencies to small-sized input touch terminals, and a detector circuit that responds
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`to signals from the oscillator via the microcontroller and the presence of an
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`operator’s capacitance to ground. Id., Abstract, 6:60-7:5. Critically, the inventors
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`determined that operating the output signals at “a higher frequency than prior art
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`touch sensing circuits” would mitigate unintended actuation, by decreasing the
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`relative impedance of the conductive path through the dielectric substrate, relative
`
`to the impedance of any surface-contaminant path. Id., 8:9-14; Ex. 2002, ¶¶ 19-23.
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`The unintended actuation problem is particularly acute in dense arrays of
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`touch circuits, as illustrated in Figure 11:
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`Prior to the ’183 Patent, solutions for preventing unintended touch pad
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`actuation in dense arrays included placing guard rings about each touch pad, and
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`adjusting the detection sensitivity of the threshold voltage, such that the operator’s
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`finger had “to entirely overlap a touch terminal and come into contact with its
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`dielectric facing plate before actuation occurs.” Id., 4:1-14; Ex. 2002, ¶ 28.
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`The inventors took a different approach. By analyzing the impedance of
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`contaminants, the inventors concluded that most unintended actuation could be
`
`avoided by setting the oscillator frequency at 50 kHz, and preferably at 800 kHz or
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`higher. Ex. 1001, 8:9-14, 11:4-11. More specifically, as described in the
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`specification, the inventors conducted extensive testing to determine the required
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`frequency ranges. For example, with reference to Figure 3A, the ’183 Patent
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`describes tests designed to find the ideal frequency ranges that, for a particular
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`surface and array, would provide a substantial enough “impedance difference
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`between the paths to ground of the touched pad 57 and adjacent pads 59.” Id., 11:1-
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`9 (“This … result[s] in a much lower incidence of inadvertent actuation of adjacent
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`touch pads to that of the touched pad”); id., 11:19-25, 17:11-67 (describing tests
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`performed to reduce crosstalk due to contaminants); id., Fig. 9 (showing signal to
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`noise ratio versus body capacitance); Ex. 2002, ¶¶ 25-29.
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`In addition to the use of high oscillator frequencies, the ’183 patent discloses
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`“a floating common and supply that follow the oscillator signal to power the
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`detection circuit.” Ex. 1001, 6:1-22, 18:66-19:6. The floating common provides a
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`reference voltage that is 5V away from the high-frequency oscillator signal, thus
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`enabling the system to compare signals that are only 5V apart. This 5V differential
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`minimizes noise that otherwise would be generated due to the presence of
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`contaminants on the touch pad. Id., 4:18-20, 5:48-53, 16:12-24; Ex. 2002, ¶ 25.
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`In Figure 11’s array, the frequencies selected through the front-end testing are
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`supplied to each row. The microcontroller activates each row of the touch circuits
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`by selectively providing a signal from the oscillator to individual rows of the touch
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`circuit. “In this manner, microcontroller 500 can sequentially activate the touch
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`circuit rows and associate the received inputs from the columns of the array with the
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`activated touch circuit(s).” Ex. 1001, 18:43-49. Supplying high frequencies in this
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`manner substantially reduces unintended actuation (crosstalk), without requiring
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`“any physical structure to isolate the touch terminals,” which allows the terminals to
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`be more closely spaced together. Id., 18:66-19:6.
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`B.
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`The Cited References
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`Apple’s Petition relies on the following references:
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`1.
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`Chiu
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`Chiu discloses a capacitive switch geometry for use in home appliances. Ex.
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`1005, 1:65-2:2. In the “conventional” switch geometry of the time, each touch pad
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`overlapped both a transmitting electrode and a receiving electrode. Id. As a result,
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`the touch pad area was more than twice what would be required to overlap just the
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`transmitting or receiving electrode(s) alone. Id., 6:9-14; Ex. 2002, ¶ 30.
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`Chiu purports to reduce the touch pad size by more than 50%, without
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`sacrificing coupling capacitance, by removing the transmitter electrode from the
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`substrate, and replacing it with a discrete capacitor. This allows the touch pad to be
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`reduced to the area of the receiver electrode alone, without reducing coupling
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`capacitance. Ex. 1005, 6:15-30. Figures 5A-5B schematically illustrate the upper
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`and lower faces of a dielectric substrate 44 according to Chiu’s arrangement:
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`
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`On the upper face (Fig. 5A), each touch pad 42 has an associated conductive
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`path 56, extending to a terminal point 60. Separate discrete capacitors 52 are
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`provided for each touch pad. On the lower face (Fig. 5B), receiver electrodes 48 are
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`provided, with one receiver electrode for each touch pad. Each receiver electrode is
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`placed in an area overlying, and bounded by, the area of its associated touch pad 42.
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`The receiver electrodes 48 in each column are serially connected together by a
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`conductive path 49, which also connects each column to the signal detection
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`circuitry 58. Id., 7:1-35; Ex. 2002, ¶ 32.
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`Figure 6A shows Chiu’s control circuit:
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`Microprocessor 90 sequentially generates a scan pulse for each row of touch
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`terminals. Id., 8:45-55. Signal detection circuitry 58 senses the scan signal coupled
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`to each column of touch cells via output lines 49, and detects any attenuation of the
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`column output line signal, which signifies a touch. Id., 8:63–9:6.
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`2.
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`Schwarzbach
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`Schwarzbach discloses an appliance control system, in which a central control
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`unit communicates with remote slave units over common power lines. Ex. 1014, 1:7-
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`13, 2:3-6. Schwarzbach does not disclose a capacitive touchpad or keypad. See Ex.
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`2003 at 243:21-244:6 (Apple’s expert Phillip Wright, admitting that Schwarzbach
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`uses a “mechanical switch keyboard, rather than a touch keyboard”).
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`In Schwarzbach, the central control unit and slave units each include a user-
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`programmable microprocessor. Appliances and light fixtures are plugged into the
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`slave units, which are plugged into the outlet sockets of a building’s power lines.
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`Schwarzbach’s
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`system
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`enables manual or
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`automatic
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`transmission of
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`command/status signals from the central control unit to the slave units, or vice versa,
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`via the building’s power lines. Id., Abstract; Ex. 2002, ¶ 35.
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`The central control unit includes a display panel, a microprocessor, and a
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`mechanical keyboard. Ex. 1014, 4:28-51. The keyboard is a 3×8 matrix, with row
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`pins 1 through 8 connected to corresponding microprocessor output terminals. Id.
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`Key presses are detected by driving output terminals, and scanning for closed keys.
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`Id. All keyboard pins are “scanned once during each cycle of AC line voltage.” Id.,
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`4:60-62. Schwarzbach uses an “AC line voltage” with “60 Hz” frequency. Id., 7:10-
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`17, 12:32-38. Thus, Schwarzbach scans its keys with a 60 Hz signal. Ex. 2004, ¶ 37.
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`3.
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`Lawson
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`Lawson discloses a microwave oven 20 with a capacitive touch panel 21. The
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`touch panel 21 includes a display 22 with a number of LEDs, which display
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`information relevant to the operation of the microwave. Id., 2:28-44. Different pad
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`functions may have different effects on different display modes, for instance, in a
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`timed cooking example. See, e.g., id., 26:61-27:25, Table 1; Ex. 2002, ¶ 37.
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`4. Meadows
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`Meadows discloses a capacitive touch panel system “positioned face-to-face
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`with the display screen 16 of a display device 18.” Ex. 1013, 3:29-37. Meadows
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`discloses that the “display device” may be a “cathode-ray tube” (CRT) display. Id.
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`In Meadows, the CRT display generates “flyback or retrace pulse[s]” at
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`“frequencies of about 15-200 kHz.” Id., 6:10-35. These flyback pulses induce noise
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`on the touch panel system, which can overwhelm the touch detection signal. Id. To
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`address this, Meadows randomly varies its measurement signal frequency over the
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`range of “150-250 kHz.” Id., 6:35-61. The 15-200 kHz noise signals from the flyback
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`pulses “are incoherent with the substantially random measurement signals.” Id.,
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`6:40-48. Thus, by randomly varying the measurement signal frequency, and using a
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`“lock-in” detector to detect only signals at the measurement frequency, Meadows
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`avoids CRT flyback noise. Id.
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`5.
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`Ingraham ’548
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`Ingraham ’548 discloses a touch control circuit. Ex. 1016 (Abstract). In
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`Ingraham ’548, the body capacitance of a person actuating the switch is coupled to
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`a voltage dividing circuit, which provides a logic output that controls a DC trigger
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`level applied to a TRIAC, or other bilateral solid-state switch. Id., 1:38-66.
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`Ingraham ’548 was considered during prosecution of the ‘183 Patent.
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`6.
`
`Tucker
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`Tucker discloses a cooktop induction heating system with touch control pads.
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`In Tucker, a “microprocessor circuit receives as input signals the control signals
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`generated by [the] touch input circuit.” Ex. 1019, 7:33-35. Based on these signals,
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`the microprocessor generates an output, indicating which touch pad has been
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`touched. Id., 7:35-43. This causes the appropriate cooktop to turn on. Id.
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`Tucker was considered during prosecution of the ’183 Patent.
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`III. CLAIM CONSTRUCTION
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`A. Claim Construction Standard
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`“In an [IPR] proceeding, a claim ... shall be construed using the same claim
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`construction standard that would be used to construe the claim in a civil action under
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`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). That standard is set forth in Phillips v.
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Under Phillips, claims should generally
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`be given “their ordinary and customary meaning,” as understood by “a person of
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`ordinary skill in the art in question at the time of the invention.” Id. at 1312-1313.
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`The most important source of meaning is “the words of the claims
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`themselves.” Id. The second-most important source is the specification. Id. at 1315.
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`The third-most important source is “the patent’s prosecution history.” Id. at 1317. In
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`construing a term, the Board “may look to extrinsic evidence so long as the extrinsic
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`evidence does not contradict … the intrinsic record.” Helmsderfer v. Bobrick
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`Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008).
`
`B.
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`“Selectively Providing Signal Output Frequencies”
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`In its Institution Decision, the Board “preliminarily construe[d] the term
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`‘selectively providing signal output frequencies’” to require “selecting a row or
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`portion of the array of touch pads” that receives the scan signal. Paper 12 at 31-32.
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`The Board expressly rejected Nartron’s argument that this term requires selection of
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`a frequency, from among multiple possible frequencies. Id. However, as the Board
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`noted, the Federal Circuit issued a ruling pertinent to the construction of this term in
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`the Samsung appeal. Id. Thus, the Board “encourage[d] the parties to address the
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`[construction of this] term … further in their papers,” and specifically “encourage[d]
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`the parties to address in their papers the import of the Samsung Appeal Opinion on
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`the construction of [this] term.” Id. at 30-31.
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`In Samsung, the Federal Circuit expressly construed “selectively providing
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`signal output frequencies” to require selection of a frequency, from among multiple
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`possible frequencies. Samsung, 775 Fed. Appx. at 697. That construction is binding
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`on the Board. See Trading Techs. 2014 WL 1645838, at *3. The Federal Circuit’s
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`construction is also correct on the merits. Thus, the Board must now construe
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`“selectively providing signal output frequencies” to mean “providing a frequency,
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`selected from multiple possible frequencies, to the array of input touch terminals.”
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`Case IPR2019-00358
`Patent No. 5,796,183
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`1.
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`The Federal Circuit Issued an Explicit Claim Construction,
`Which Is Binding on the Board
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`In Samsung, Samsung filed IPR2016-00908, challenging various claims of the
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`’183 patent. Samsung, 775 Fed. Appx. at 693. The Board found that Samsung failed
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`to prove obviousness, because: (i) it did not prove a motivation to combine the
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`references to “selectively provid[e] signal output frequencies;” and (ii) it did not
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`prove a reasonable expectation of success in doing so. Id. at 694. While the Federal
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`Circuit reversed the Board’s decision on motivation to combine, id. at 694-696, it
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`vacated the Board’s decision on reasonable expectation of success, and remanded
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`for further proceedings on that issue2. Id. at 696-697.
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`The Federal Circuit’s remand on reasonable expectation of success centered
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`on its construction of “selectively providing signal output frequencies.” Id. at 696-
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`697. The Federal Circuit held that the Board’s Final Written Decision (“FWD”) on
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`the reasonable expectation issue “rest[ed] on an implicit claim construction,” under
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`which “the microcontroller [must] provide different frequencies to different rows of
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`touch pads.” Id. The Federal Circuit “conclude[d] that the Board’s implicit claim
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`construction was erroneous,” because the claims do not actually require providing
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`2 The Samsung case (IPR2016-00908) is still on remand at the Board. The parties
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`have filed briefs on the “reasonable expectation of success” issue, and they are
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`awaiting the Board’s Final Written Decision.
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`Case IPR2019-00358
`Patent No. 5,796,183
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`different frequencies to different rows of the touchpad. Id. Rather, the Federal
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`Circuit held that the claims “only require[] that different frequencies be provided to
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`the entire pad.” Id. Based on that construction, the Federal Circuit remanded for the
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`Board to determine “whether there was a reasonable expectation that the
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`combination could have been modified to ‘provide’ a frequency, selected from
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`multiple possible frequencies, to the entire touch pad.” Id. (emphasis added).
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`The Federal Circuit repeatedly, and explicitly, characterized its ruling as one
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`of claim construction. The Federal Circuit stated: “This is not a question of which
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`expert to credit, contrary to the Board’s approach, but rather a legal determination
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`regarding claim construction.” Id. at 696 (emphasis added). It further stated:
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`“Reasonable expectation of success constitutes a question of law where, as here, it
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`rests on claim construction and there is no extrinsic evidence offered.” Id.
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`(emphasis added). Finally, it stated: “[b]ased on the proper claim construction, we
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`vacate and remand for the Board to consider whether Samsung has shown that there
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`would have been a reasonable expectation of success.” Id. at 697 (emphasis added).
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`Based on these statements, the Federal Circuit plainly made a legal
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`determination on the proper construction of “selectively providing signal output
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`frequencies.” Under the Federal Circuit’s construction, “selectively providing signal
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`output frequencies” means “‘provid[ing] a frequency, selected from multiple
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`possible frequencies, to the entire touch pad.” Id. (emphasis added). The Federal
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`Case IPR2019-00358
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`Circuit repeatedly characterized this ruling as one of claim construction.
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`Furthermore, this ruling was essential to the Federal Circuit’s decision to vacate and
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`remand for further proceedings. Id.
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`Unlike a district court’s constructions,
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`the Federal Circuit’s claim
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`constructions are binding on lower tribunals, even if the party against whom they
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`are asserted did not have an opportunity to contest them before the Federal Circuit.
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`See Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2014 WL 1645838, at
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`*3 (N.D. Ill. 2014) (“The Federal Circuit’s decision is binding as a matter of law and
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`a district court must apply the Federal Circuit’s claim construction even where a
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`non-party to initial litigation would like to present new arguments”); Pass &
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`Seymour, Inc. v. Hubbell Inc., 2011 U.S. Dist. LEXIS 1135, at *4 (N.D.N.Y.2011)
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`(“[D]istrict courts are bound to apply the Federal Circuit’s claim constructions, even
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`as against non-parties to the initial litigation”) (emphasis added).
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`The rule requiring lower tribunals to apply the Federal Circuit’s claim
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`constructions flows directly from Markman v. Westview Instruments, 517 U.S. 370
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`(1996). “In an effort to promote uniformity and predictability in the treatment of a
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`patent, the Supreme Court in Markman held that claim construction is decided as a
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`matter of law and would thus be subject to the doctrine of stare decisis.” Eolas
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`Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, 2011 WL 11070303, at *2 (E.D.
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`Tex. Sept. 23, 2011). As courts acknowledge, “the principle of stare decisis would
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`Case IPR2019-00358
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`lose all meaning if a later defendant could unbind itself [from the Federal Circuit’s
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`prior construction] by merely framing the issue differently.” Id. Accordingly, even
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`though it may be “troublesome” to apply the Federal Circuit’s construction against
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`a party who did not have an opportunity to challenge it, “when the Federal Circuit
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`construes a term, it does so as a matter of law and its holding is binding.” Id.
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`(emphasis added) (citing Amgen, Inc. v. Hoffmann–LaRoche Ltd., 494 F.Supp.2d 54,
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`60–61 (D.Mass.2007) (“Stare decisis … is not narrowly confined to parties and
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`privies…. When construing the claims of a patent, the Federal Circuit is creating
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`legal precedent. In accordance with the principles of stare decisis, this Court is
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`bound to follow the [Federal Circuit’s] prior constructions.”)
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`Here, the Federal Circuit issued a binding legal decision that “selectively
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`providing signal output frequencies” in the ’183 patent means “provid[ing] a
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`frequency, selected from multiple possible frequencies, to the entire touch pad.”
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`Samsung, 775 Fed. Appx at 697. Numerous district courts have held that the Federal
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`Circuit’s claim constructions are legal pronouncements on the proper interpretation
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`of a patent claim, which have uniform, nationwide effect on the patent in question.
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`Trading Techs, 2014 WL 1645838, at *3; Hubbell, 2011 U.S. Dist. LEXIS 1135, at
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`*4; Eolas, 2011 WL 11070303, at *2; Amgen, 494 F.Supp.2d 54, 60–61. Now that
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`the Board is obligated to apply the same claim construction standard as a district
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`court (see 37 C.F.R. § 42.100(b)), the Federal Circuit’s constructions are just as
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`Case IPR2019-00358
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`binding on the Board as they are on district courts.
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`Accordingly, the Federal Circuit’s construction of “selectively providing
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`signal output frequencies” in Samsung is binding on the Board as stare decisis, even
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`though Apple did not participate in the Samsung Appeal.
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`2.
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`Adopting the Federal Circuit’s Construction Would Not Cause
`the Claims to Lack Written Description Support
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`In its Institution Decision, the Board expressed concern that “constru[ing] …
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`‘selectively providing signal output frequencies’ to require the microcontroller [to]
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`select signal output frequencie