Ex. 2004
`Filed: November 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE, INC.
`Petitioner
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`____________________
`
`Case IPR2019-00358
`Patent No. 5,796,183
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`____________________
`
`DECLARATION OF DR. DARRAN CAIRNS
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`SAMSUNG EXHIBIT 1020
`Samsung v. Nartron
`IPR2016-00908
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`
`Filed: November 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE, INC.
`Petitioner
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`____________________
`
`Case IPR2019-00358
`Patent No. 5,796,183
`
`____________________
`
`DECLARATION OF DR. DARRAN CAIRNS
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`SAMSUNG EXHIBIT 1020
`Samsung v. Nartron
`IPR2016-00908
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`
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`
`
` I, Darran Cairns, declare as follows:
`
`Case IPR2019-00358
`Patent No. 5,796,183
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`
`1. My name is Dr. Darran Cairns. I am a Director of Program Operations
`
`and Faculty Member in the School of Computing and Engineering at the University
`
`of Missouri Kansas City. I am also an Adjunct Professor of Mechanical and
`
`Aerospace Engineering at West Virginia University, where I have served on the
`
`faculty since 2006.
`
`2.
`
`I have been retained by UUSI, LLC d/b/a Nartron (“Patent Owner” or
`
`“Nartron”) as an independent expert in the above-captioned proceeding, IPR2019-
`
`00358, before the Patent Trial and Appeal Board (“PTAB” or “Board”).
`
`3.
`
`I have been asked to review and opine on Apple’s Petition for Inter
`
`Partes Review, Case No. IPR2019-00358 (“Petition”), of U.S. Patent No. 5,796,183
`
`(“the ’183 Patent”), the Declaration of Dr. Phillip Wright submitted in support of
`
`that Petition, and the Board’s decision to institute review in this case. I have also
`
`been asked to explain the technology described, and the invention claimed, in U.S.
`
`Patent No. 5,796,183 and the two Reexamination Certificates issued for that patent.
`
`Finally, I have been asked to consider and describe the prior art cited in the IPR.
`
`4.
`
`I am being compensated at a rate of $490/hour for my work. I have no
`
`other interest in this proceeding. My compensation is in no way contingent on the
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`nature of my findings, the presentation of my findings in testimony, or the outcome
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`of this proceeding.
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`
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`BACKGROUND AND QUALIFICATIONS
`5.
`As stated above, I am a Director of Program Operations and a Faculty
`
`Case IPR2019-00358
`Patent No. 5,796,183
`
`
`I.
`
`Member in the School of Computing and Engineering at the University of Missouri
`
`Kansas City. I am also an Adjunct Professor of Mechanical and Aerospace
`
`Engineering at West Virginia University. I was an Associate Professor with Tenure
`
`at West Virginia University until August 2014.
`
`6.
`
`I hold an undergraduate degree in Physics (1995) and a Ph.D. in
`
`Materials Science and Engineering (1999) from the University of Birmingham in the
`
`United Kingdom. From 1998 to 2001, I was a postdoctoral research associate in the
`
`Display Laboratory at Brown University. While at the University of Birmingham, I
`
`performed research related to optical fibers and optical sensors, and worked closely
`
`with engineers at Pirelli Cables. During my time at Brown University, I performed
`
`research on optoelectronic and display devices, including flexible electronics,
`
`conformable displays, encapsulated liquid crystal devices, and touch sensors.
`
`7.
`
`At West Virginia University, my research focused on the fabrication of
`
`flexible electronic devices. My work was funded by federal agencies, including the
`
`National Science Foundation, NASA, the Air Force Office of Sponsored Research,
`
`and the Department of Energy, and by private companies, including EuropTec USA,
`
`Grote Industries, Kopp Glass, Eastman Chemical, and Articulated Technologies. I
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`have worked closely with engineers at each of these companies, and assisted them
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`in developing and commercializing electronic devices, including electronic lighting
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`for automotive use and flexible backlights for displays.
`
`8.
`
`In my own research, I am developing patented technologies on
`
`functional coatings for electronic and energy applications. I am a named inventor on
`
`11 U.S. patents in the field of touch sensors, displays, and liquid crystal materials.
`
`9.
`
`Prior to joining the faculty at West Virginia University, I worked for
`
`five years as a Research Specialist at 3M Touch Systems. My research there focused
`
`on capacitive touchscreen applications. My work at 3M included the development
`
`of patented and proprietary technologies on capacitive touch sensors.
`
`10.
`
`I am a member of the Society of Information Display (SID), the
`
`Institute of Physics (IOP) and the American Society of Mechanical Engineers.
`
`11. My students have been awarded prestigious fellowships for work
`
`performed in my laboratory, including NSF Graduate Fellowships (3 students),
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`NDSEG Fellowship (1 student) and the RUBY graduate Fellowship (1 student).
`
`12. My curriculum vitae, attached as Appendix 1, lists more than 79
`
`scientific publications in journals, books, and peer-reviewed conferences, as well as
`
`invited presentations on my work in polymer materials for electronic devices.
`
`II. MATERIALS REVIEWED
`13.
`In preparing this Declaration, I have reviewed at least the following
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`materials:
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`a. All materials specifically identified in this Declaration;
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`Case IPR2019-00358
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`b. All materials identified as having been reviewed in my prior
`
`Declaration in this case, dated 5/6/2019 (IPR2019-00358, Ex. 2002);
`
`c. The Federal Circuit’s decision in Samsung Elecs. Co. v. UUSI, LLC,
`
`775 F. App'x 692 (Fed. Cir. 2019);
`
`d. The ‘183 Patent (IPR2019-00358, Ex. 1001);
`
`e. Apple’s Petition for Inter Partes Review of the ‘183 Patent (IPR2019-
`
`00358, Paper 2);
`
`f. Excerpts from the Prosecution History of the ‘183 Patent (IPR2019-
`
`00358, Ex. 1002);
`
`g. The Declaration of Phillip Wright, submitted in support of Apple’s
`
`Petition for Inter Partes Review (IPR2019-00358, Ex. 1003);
`
`h. The prosecution history of Reexamination Control No. 90/012,439
`
`(IPR2019-00358, Ex. 1006);
`
`i. The prosecution history of Reexamination Control No. 90/013,106
`
`(IPR2019-00358, Ex. 1007);
`
`j. U.S. Patent No. 4,561,002 to Chiu (“Chiu”) (IPR2019-00358, Ex.
`
`1005);
`
`k. U.S. Patent No. 4,922,061 to Meadows (“Meadows”) (IPR2019-00358,
`
`Ex. 1013);
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`l. U.S. Patent No. 4,418,333 to Schwarzbach (“Schwarzbach”) (IPR2019-
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`Case IPR2019-00358
`Patent No. 5,796,183
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`
`00358, Ex. 1014);
`
`m. U.S. Patent No. 4,731,548 to Ingraham (“Ingraham ’548”) (IPR2019-
`
`00358, Ex. 1016);
`
`n. U.S. Patent No. 4,308,443 to Tucker (“Tucker”) (IPR2019-00358, Ex.
`
`1019);
`
`o. U.S. Patent No. 4,328,408 to Lawson (“Lawson”) (IPR2019-00358, Ex.
`
`1032); and
`
`p. The other U.S. patents cited by Apple, but not actually relied upon to
`
`form the basis for a proposed rejection (i.e., IPR2019-00358, Exs. 1004,
`
`1008-1012, 1015, 1018 and 1020-1031).
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`14.
`I have been informed that factors relevant to determining the level of
`
`ordinary skill in the art include: the educational level of the inventor; the type of
`
`problems encountered in the art; the prior art solutions to those problems; the
`
`rapidity with which innovations are made; the sophistication of the technology; and
`
`the educational level of active workers in the field. On this basis, one 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.
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`IV. OVERVIEW OF THE ‘183 PATENT
`15. The ’183 Patent, issued in 1998, is exemplary of the efforts that I
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`Case IPR2019-00358
`Patent No. 5,796,183
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`understand Nartron undertook as a pioneer in touchscreen technology. The ’183
`
`Patent builds upon and provides significant improvements over prior Nartron patents
`
`invented by Ronald D. Ingraham, including Ingraham ’735 and Ingraham ’548,
`
`which Apple asserts in its IPR Petitions. Filed over 20 years ago, the ’183 Patent
`
`provides a foundation upon which today’s touch screen technology is built. See
`
`Samsung v. UUSI, IPR2016-00908, Ex. 1014 at 1.
`
`16. The ‘183 Patent has been cited at least 161 times by patents and patent
`
`applications.
`
`See
`
`https://patents.google.com/patent/US5796183A/en#citedBy.
`
`Many of these patents are assigned to well-known technology companies, such as
`
`Cypress Semiconductor, Samsung Electronics, Touchscreen Technologies Inc.,
`
`Microsoft, Nokia, and Intel. See Samsung v. UUSI, IPR 2016-00908, Ex. 2004.
`
`17. The ’183 Patent issued on August 18, 1998 from an application filed on
`
`January 31, 1996. The ’183 Patent has been reexamined twice. Ex. 1006-1007. Three
`
`of the challenged claims, Claims 37, 38 and 39, were added during the first
`
`reexamination. See Ex. 1001, Ex Parte Reexamination Certificate C1. The remainder
`
`of the challenged claims were added during the second reexamination. See Ex. 1001,
`
`Ex Parte Reexamination Certificate C2.. The ’183 Patent generally relates to a
`
`capacitive responsive electronic switching circuit, including an oscillator providing
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`a periodic output signal, an input touch terminal defining an area for an operator to
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`provide an input by proximity and touch, and a detector circuit coupled to the
`
`oscillator for receiving the periodic output signal from the oscillator, and coupled to
`
`the input touch terminal. Ex. 1001 (Abstract).
`
`18. Capacitive sensors at the time of invention (including the prior art
`
`sensors cited in the Petition) were largely limited to use in kitchen appliances, such
`
`as stoves and microwaves. Indeed, the filing date of the application (January 1996)
`
`predates the release of the widely-used Palm Pilot 1000 in March 1996. The touch
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`screen interface for the Palm Pilot was a relatively crude resistive touch sensor that
`
`was not capable of multi-touch input.
`
`19.
`
`In early 1996, when the application from which the ‘183 Patent issued
`
`was filed, due to physical space constraints, there was a drive to make capacitive
`
`touch keypads smaller and smaller, while increasing the number of touch terminals
`
`on the keypad. Yet, a substantial barrier existed in that the more densely the touch
`
`terminals were spaced, and the smaller the touch terminals became, the greater the
`
`risk of coupling adjacent touch terminals, resulting in multiple actuations of touch
`
`terminals when only a single one was desired. This problem is described in the
`
`specification of the ‘183 Patent. See Ex. 1001, 3:64-4:8.
`
`20. At the time of invention, the only way that was known to put touch pads
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`as closely together as possible was to use physical structures to prevent inadvertent
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`actuation of adjacent touch pads, or “crosstalk.” These physical structures included
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`guard rings, guard bands, or a combination of electrodes with opposing electric fields
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`(collectively referred to as “guard rings”), included as a part of each touch terminal.
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`Id. However, guard rings presented a barrier to developing a truly compact device,
`
`because they require additional space and therefore limit the proximity and size of
`
`the touch terminals. There was no known way to overcome this problem until the
`
`invention disclosed and claimed in the ’183 Patent.
`
`21. Today’s cell phones and tablets offer a rich user input interface in very
`
`large part due to the innovations taught in the ’183 Patent. These devices require a
`
`very closely spaced array of sensitive, small-sized, multi-touch input sensors, that
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`can be rapidly controlled using a microprocessor. In addition, these devices must be
`
`able to recognize multi-touch gestures, and differentiate these gestures from noise,
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`contamination and unintentional touches. The ’183 Patent was the first to teach the
`
`combination of all these things.
`
`22.
`
`In particular, the teachings of the ’183 Patent were crucial to the
`
`elimination of the physical structures used in the prior art to prevent crosstalk
`
`between adjacent input touch terminals. The teachings of the ‘183 Patent also
`
`permitted an increase in touch terminal sensitivity, which allowed for a reduction in
`
`the size of individual input touch terminals. In addition, the ’183 Patent teaches how
`
`to minimize noise due to contaminants, by selecting oscillator frequencies that
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`decrease the relative impedance of conductive paths through the dielectric substrate,
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`relative to the impedance of contaminant paths. This is another critical contribution,
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`which is widely used in today’s cell phones and tablets. The ability to differentiate
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`between a full touch and a partial touch, and to reject unintentional actuations of
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`closely-spaced touch terminals, is essential to a capacitive screen’s ability to
`
`recognize multi-touch gestures. Thus, the teachings of the ‘183 Patent have enabled
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`the rich, multi-touch user interfaces that have driven the rapid adoption of smart
`
`phones, cell phones and tablets with capacitive sensors.
`
`23. By eliminating the need for guard rings in a multi-touch pad
`
`configuration, the ’183 Patent offers improvements in detection sensitivity, which
`
`allow and enable employment of a multiplicity of small sized touch terminals in a
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`physically close array. Id., 5:53-57. This increased sensitivity is accomplished by:
`
`(i) using an oscillator signal in combination with a floating common, operating at a
`
`5-volts difference from the output of the oscillator, as a scan signal for the touch
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`input circuitry; and (ii) using high frequency signals (preferably greater than 800
`
`kHz) to drastically reduce the impact of noise due to contaminants on the screen.
`
`This innovative touch sensor design allows for input touch terminals to be very
`
`small, and densely arranged together. With the use of a microprocessor to send the
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`oscillator signal to each of these small, closely-spaced input touch terminals, it was
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`possible to create, for the first time, a keypad we now see in cell phones and tablets.
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`24. Accordingly, the ’183 Patent paved the way for today’s touch screen
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`devices. The ’183 Patent achieves a high degree of detection sensitivity, without the
`
`need for guard rings, in several ways, as described below.
`
`25. First, the ’183 Patent offers “enhanced sensitivity” because it
`
`minimizes “susceptibility to variations in supply voltage and noise” by the use of
`
`high oscillator frequencies, and by “use of a floating common and supply that follow
`
`the oscillator signal to power the detection circuit.” Id., 6:1-22; 18:66-19:6. The
`
`floating common provides a reference that is only 5V away from the high-frequency
`
`oscillator output signal, enabling the system to compare signals that are only 5V
`
`apart. This 5V differential minimizes noise that otherwise would be generated due
`
`to the presence of contaminants on the touch pad, such as liquid or skin oils. Id.,
`
`4:18-20; 5:48-53; 16:12-24.
`
`26. Second, the ’183 Patent achieves “enhanced sensitivity” by using an
`
`oscillator that outputs a signal with a voltage that is as high as possible—e.g., a
`
`26V-peak square wave—while still being low enough to obviate the need for
`
`expensive components and testing to alleviate safety concerns. Id., 6:6-13; 12:6-23.
`
`27. Third, the ’183 Patent’s detection circuit “operates at a higher
`
`frequency than prior art touch sensing circuits,” which “is not a benign choice”
`
`relative to the prior art detection circuits. Id., 8:9-14. The ’183 Patent discloses
`
`extensive testing that was performed in order to determine the optimal frequency
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`ranges. With reference to Figure 3A, the ’183 Patent discloses that tests were
`
`performed to find the ideal frequency ranges that would provide a substantial enough
`
`“impedance difference between the paths to ground of the touch pad 57 and adjacent
`
`pads 59.” Id., 11:1-9. “This . . . result[s] in a much lower incidence of inadvertent
`
`actuation of adjacent touch pads to that of the touched pad.” Id..
`
`28. Thus, the ’183 Patent discloses a circuit with very high frequencies, a
`
`floating common generator, and as-high an oscillator voltage as possible, so as to
`
`bring the input touch terminals in closer proximity and make them smaller, while
`
`still providing enhanced detection sensitivity, without the need for physical
`
`structures like guard rings to isolate the touch terminals. Id., 8:9-11:60. A schematic
`
`of the essential elements of an embodiment of the invention is shown in Figure 11:
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`29. The invention of the ‘183 Patent made a groundbreaking contribution
`
`to the art. To my knowledge, no other device existed that provided the inventive
`
`combination of closely-spaced input terminals with enhanced detection sensitivity.
`
`To the contrary, the developments in the art at that time were focused on the use of
`
`physical structures, such as guard rings, to reduce noise and crosstalk. Thus, the ‘183
`
`Patent represented a marked departure from the prevailing approach at the time.
`
`V.
`
`SUMMARY OF THE CITED REFERENCES
`A. Chiu
`30. Chiu relates to a capacitive switch arrangement useful as a control panel
`
`for major home appliances, such as microwave ovens. Ex. 1005, 1:65-2:2. Chiu
`
`explains that, when a large number of touch pads were desired in a relatively small
`
`area, the minimum electrode and touch pad areas required to provide sufficient
`
`coupling capacitance presented a design limitation for the then-conventional
`
`attenuator-type switch cells. Id., 6:3-8. In the then-conventional techniques upon
`
`which Chiu sought to improve, the receiver and transmitter electrodes shared the
`
`touch pad, so the touch pad area required to provide the minimum capacitance for
`
`each of the series capacitances CT and CR (i.e., the capacitance between the touch
`
`pad 16/16’ and the transmitter electrode 20/20’, and the capacitance between the
`
`touch pad 16/16’ and the receiver electrode 22/22’, respectively) was more than
`
`twice that required for the transmitting or receiving electrode alone. Id., 6:9-14.
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`31. Chiu purportedly was able to reduce the touch pad size by more than
`
`50%, without sacrificing coupling capacitance, by removing the transmitter
`
`electrode from the substrate, and replacing it with a discrete capacitor separate from
`
`the touch pad and the receiver electrode. This arrangement allowed the touch pad
`
`area to be reduced to the area of the receiver electrode alone, without reducing the
`
`resulting receiver capacitance. Id., 6:15-30. Figs. 5A-5B schematically illustrate the
`
`outer face of a dielectric substrate 44 according to this arrangement:
`
`
`
`32. Each touch pad 42 has an associated conductive path 56, which extends,
`
`substantially parallel to the horizontal rows of touch pads, to an associated terminal
`
`point 60. Separate discrete capacitors 52 are provided, such that one capacitor is
`
`associated with each touch pad. On the opposite side of the substrate 44, receiver
`
`electrodes/pads 48 are provided, with one for each touch pad. Each of the receiver
`
`electrodes is placed in an area overlying and bounded by the area of its associated
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`touch pad 42. The receiver electrodes 48 in each column are serially connected
`
`together by a conductive path 49, with each column of receiver electrodes being
`
`coupled to the signal detection circuitry 58. Id., 7:1-35.
`
`33. To prevent erroneous operation, which might result from inadvertent
`
`touching of the conductive paths 56, a second plurality of conductive paths 70 are
`
`formed on the outer surface of the substrate 44. The second paths 70 are placed
`
`sufficient close to the first paths 56 so that a human touch to one path ordinarily
`
`would involve a touch to the other path in the pair. Each of the paths 70 is connected
`
`to a terminal point 72, which is electrically connected through the substrate to
`
`terminal points 71. The terminal points 71, in turn, are connected to a capacitor
`
`network 74 via conductive runs 73. Paths 70 function as a “pseudo-touch pad.” Id.
`
`(7:36-67). Detection circuitry 58 ensures that detection of an attenuated signal at the
`
`output terminal 84 of capacitor network 74 takes priority over any other input to the
`
`detection circuitry. And, because the relative positioning of conductive paths 56 and
`
`70 is such that touching of one of runs 56 ordinarily would be accompanied by
`
`touching one of the runs 70 as well, the control system does not respond to
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`inadvertent touching of any other panel except the touch pads.
`
`34. Fig. 6A shows Chiu’s control circuit:
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`35.
`
`In operation, Chiu’s microprocessor 90 sequentially generates a scan
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`pulse for each row shown in Figs. 5A-5B, and a separate test signal is generated,
`
`simultaneously with each scan pulse, to address the erroneous signal detection issue
`
`discussed above. Id., 8:45-55. When a particular cell is touched, the signal detection
`
`circuitry 58 senses the attenuated scan signal at that cell’s column line 49. Id. The
`
`signal detection circuitry then notifies the microprocessor 90 of the touch. Id.
`
`B.
`Schwarzbach
`36. Schwarzbach discloses an appliance control system for providing
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`communication between a central control unit and remote slave units over common
`
`power lines, such as a building’s power supply. Ex. 1014, 1:7-13, 2:3-6. The
`
`appliance control system includes a central control unit, and a number of slave units,
`
`each including a user-programmable microprocessor. Appliances and light fixtures
`
`are plugged into respective slave units, which are plugged into outlet sockets of a
`
`power main in a building. In operation, the system permits manual or automatic
`
`transmission of command signals and status request signals from the central control
`
`unit to the individually addressed slave units, and the transmission of status signals
`
`from the slave units to the central control unit. Id., Abstract.
`
`37. The central control unit includes a display panel, which is coupled to a
`
`microprocessor, and a mechanical keyboard. Id. (4:28-29, 4:50-51). The keyboard
`
`is connected as a 3×8 matrix, with its row pins 1 through 8 connected to
`
`corresponding microprocessor output terminals. Key depresses are detected by
`
`driving output terminals and scanning for closed keys. Specifically, the
`
`microprocessor sequentially drives its output terminals to a high level for a set
`
`interval. All keyboard pins are scanned once during each cycle of AC line voltage,
`
`for simultaneously driving the keyboard rows and the displaying the panel character
`
`terminals. During the time that a keyboard row pin is held high, the microprocessor
`
`looks at its input wires to determine whether a key is closed. When a key closure is
`
`detected, the microprocessor takes the appropriate action. Id., 4:55 to 5:1.
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`C. Lawson
`38. Lawson relates to microwave oven controllers. Lawson states that
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`controlling the operation of the (then) newly-released microwave oven had become
`
`complex. Id., 1:19-21. Thus, its “main object . . . is to provide an oven controller
`
`with extreme versatility, capable of operating in a time mode or in a temperature
`
`mode.” Id., 2:3-5. Lawson also seeks to provide a controller that is simple to operate,
`
`yet controls a complex sequence. Id., 2:9-11. With respect to the latter, Lawson
`
`discloses an oven 20 having a controller with a capacitive touch panel 21. As shown
`
`in Figure 2, the touch panel 21 includes a display 22, along with a number of LEDs
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`D16-D29 that output information relevant to operation of the microwave oven. Id.,
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`2:28-44. Lawson describes the function of its various pads and keyboard, noting that
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`different pad functions may have different effects on display modes, for instance, in
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`connection with a timed cooking example. See, e.g., id., 26:61-69, 27:1-25; Table 1.
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`D. Meadows
`39. Meadows discloses a capacitive touch panel system of the type used
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`with a pen or stylus. Ex. 1013, 1:12-15. The Meadows patent addresses
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`electromagnetic interference caused by the conductive coating on the faceplate and
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`the touch panel system, which generates electromagnetic noise that can make it
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`difficult to determine a touch location. Id. (1:51-63). As disclosed, Meadows reduces
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`susceptibility to electromagnetic noise by using a “lock-in type” signal demodulator
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`and low-pass filter. Id. (2:61-68). The signal demodulator, in response to a pseudo-
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`random number signal, employs a random frequency measurement signal with a
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`frequency between 150 kHz and 250 kHz, as reference for demodulating the positive
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`and negative differential output signal. Id. (2:61-64, 4:28-32). This signal is fed into
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`the low pass filter which provides, from the demodulated signal, a substantially
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`steady-state address signal, which corresponds to an average of the magnitude of the
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`current drawn through a bar electrode. Id. (2:64-68).
`
`E.
`Ingraham ‘548
`40. Apple’s six petitions for IPR cite three patents granted in the name of
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`Ingraham: U.S. Patent Nos. 4,731,548 (Ex. 1016); 4,758,735 (Ex. 1017); and
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`5,087,825 (Ex. 1025). Each of these three Ingraham patents was invented by a
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`Nartron engineer, and was considered during prosecution of the ’183 Patent. The
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`latter two Ingraham patents—namely, Ingraham ’735 and Ingraham ’825 (Ex. 1017
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`and 1025, respectively)—are extensively discussed in the ’183 Patent. Ex. 1001
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`(3:44-50; 4:3-8; 5:43-50; 6:6-16; 8:11-18; 18:1-10). And both Ingraham ’548 and
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`Ingraham ’825 were cited in, and relied upon, in the Samsung IPR.
`
`41. Like the later Ingraham patents, Ingraham ’548—the earliest of these
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`three Ingraham patents—discloses a touch control switch circuit. Ex. 1016, Abstract.
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`Ingraham ’548 in particular improves reliability of touch-controlled switching
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`circuits, since it does not rely upon induced voltage for its operation. Rather, in
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`Ingraham ’548, the body capacitance of the person actuating the switch is coupled
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`into a voltage-dividing circuit, which is used to provide a logic output signal for a
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`DC trigger level applied to a Triac, or other bilateral solid-state switch, coupled
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`between the line voltage source and a load to be controlled. By utilizing a direct
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`current control signal for the solid-state switch, the switch is rendered conductive
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`near the beginning of each half-cycle of operation, and remains conductive during
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`each half cycle of operation. Thus, through a DC gate signal, inductive loads such
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`as fluorescent lights and motors may be controlled. Id., 1:38-66.
`
`F.
`Tucker
`42. Tucker discloses a cooktop induction heating system with touch control
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`pads for electrically energizing induction heating coils. A “microprocessor circuit
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`receives as input signals the control signals generated by touch input circuit.” Ex.
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`1019, 7:33-35; Figs. 3 and 5. These signals are applied to the microprocessor circuit,
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`with the output from the microprocessor circuit indicating that a particular touch
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`control pad has been touched. Id., 7:35-43. Additionally, Tucker discloses various
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`software flow diagrams that the processor can execute to operate the cooktop
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`controls. See id., 16:52-54; Fig 10 (describing the software flow diagram for the
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`basic program architecture of microprocessor circuit 82). Tucker, like Ingraham
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`’548, was considered during prosecution of the ’183 Patent.
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`VI. CLAIM CONSTRUCTION
`A. Legal Standard
`43.
`I understand that the claim construction standard in this case is set forth
`
`in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). I understand that, under
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`Phillips, claims should generally be given “their ordinary and customary meaning,”
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`as understood by “a person of ordinary skill in the art in question at the time of the
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`invention.” Id. at 1312-1313. I understand that the most important source of meaning
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`is “the words of the claims themselves.” Id. I understand that the second-most
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`important source is the specification. Id. at 1315. I understand that the third-most
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`important source is “the patent’s prosecution history.”
`
`B.
`44.
`
`“Selectively Providing Signal Output Frequencies”
`In this case, Apple asserts that claims 37-39, 94, 96-99, 101-109, and
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`115-116 (the “challenged claims”) are obvious over the prior art. All challenged
`
`claims recite a “microcontroller selectively providing signal output frequencies to a
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`closely spaced array of input touch terminals.”
`
`45. On June 18, 2019, the Federal Circuit issued a decision in Samsung
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`Elecs. Co. v. UUSI, LLC, 775 F. App'x 692 (Fed. Cir. 2019) (the “Samsung appeal”).
`
`I understand that the Samsung appeal was an appeal from the Board’s final written
`
`decision in IPR2016-00908, which Samsung had filed against claims 37-41, 43, 45,
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`47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 of the ‘183 Patent.
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`I understand that, in IPR2016-00908, the Board issued a Final Written
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`46.
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`Decision, finding that Samsung failed to prove obviousness of any claim challenged
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`in that IPR. The Board specifically found that Samsung failed to prove: (i) a
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`motivation to combine the cited references; and (ii) a reasonable expectation of
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`success in combining those references, to achieve the claimed “selectively providing
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`signal output frequencies” limitation. I submitted two Declarations in support of
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`Nartron’s positions in IPR2016-00908.
`
`47.
`
`I understand that Samsung appealed the Board’s Final Written Decision
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`to the Federal Circuit. I understand that, in the appeal, the Federal Circuit reversed
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`the Board’s finding that there was no motivation to combine. I understand that the
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`Federal Circuit also vacated the Board’s finding of no reasonable expectation of
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`success, and remanded to the Board for further proceedings on that issue.
`
`48.
`
`I understand that the Federal Circuit’s decision to reverse the Board on
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`reasonable expectation of success was based on the Federal Circuit’s construction of
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`the claim term “selectively providing signal output frequencies.” The Federal
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`Circuit’s Opinion expressly stated that its decision was “a legal determination
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`regarding claim construction,” and that “[r]easonable expectation of success . . . rests
`
`on claim construction.” Samsung, 775 F. App’x at 696. Thus, I understand that the
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`Federal Circuit issued a claim construction of “selectively providing signal output
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`frequencies” in the Samsung appeal, and that that construction was central to the
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`Federal Circuit’s decision to remand to the Board.
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`49. Specifically, I understand
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`that
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`the Federal Circuit construed
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`“selectively providing signal output frequencies” to mean “‘provid[ing]’ a
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`frequency, selected from multiple possible frequencies, to the entire touch pad.”
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`Samsung, 775 F. App’x at 697.
`
`50.
`
`I have been advised by counsel that the Board is obligated to follow
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`claim constructions issued by the Federal Circuit, even if the construction is issued
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`in a different case. Thus, I understand that the Board must construe “selectively
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`providing signal output frequencies” consistently with the Federal Circuit’s
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`construction, to require providing a frequency, selected from multiple possible
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`frequencies, to the touch pad.
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`51. The Federal Circuit’s construction is consistent with the construction
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`that I proposed for this term in my prior Declaration. See IPR2019-00358, Ex. 2002,
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`¶¶ 43-48. Previously, I proposed to construe “selectively providing signal output
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`frequencies” to mean “selectively sending signals selected from various frequencies
`
`avai
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