Trials@uspto.gov
`571-272-7822
`
`Paper 2(cid:26)
`Date: August 4, 2020
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`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 IPR2019-00359
`Patent 5,796,183
`_____________
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`IPR2016-00908
`Exhibit 2017
`
`
`571-272-7822
`
`Paper 2(cid:26)
`Date: August 4, 2020
`
`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 IPR2019-00359
`Patent 5,796,183
`_____________
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`IPR2016-00908
`Exhibit 2017
`
`
`
`IPR2019-00359
`Patent 5,796,183
`
`
`I.
`INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Apple Inc. (“Petitioner” or “Apple”) challenges the patentability of claims
`27, 28, 32, 36, 83–88, and 90–93 (the “challenged claims”) of U.S. Patent
`No. 5,796,183 (Ex. 1001, “the ’183 patent”), owned by UUSI, LLC d/b/a
`Nartron (“Patent Owner”). This Final Written Decision is entered pursuant
`to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed
`below, we determine Petitioner has shown by a preponderance of the
`evidence that claims 28, 32, 36, 83–85, and 90–93 of the ’183 patent are
`unpatentable, but has not proven by a preponderance of the evidence that
`claims 86–88 of the ’183 patent are unpatentable.
`
`II.
`BACKGROUND
`Procedural History
`A.
`On November 29, 2018, Petitioner filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of the challenged claims. Patent Owner
`filed a Preliminary Response (Paper 8, “Prelim. Resp.”) on May 6, 2019.
`On August 5, 2019, applying the standard set forth in 35 U.S.C.
`§ 314(a), which requires demonstration of a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`instituted an inter partes review of the challenged claims. Paper 12
`(“Inst. Dec.”). In the Institution Decision, we determined Petitioner
`demonstrated a reasonable likelihood that it would prevail as to at least one
`challenged claim, and we instituted trial on all claims and all grounds in the
`Petition. Inst. Dec. 63–64.
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 16, “PO Resp.”), Petitioner filed a Reply to Patent Owner Response
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`(Paper 19, “Reply”), and Patent Owner filed a Sur-reply (Paper 23,
`“Sur-reply”). An oral hearing was held on May 7, 2020, and a copy of the
`hearing transcript has been entered into the record. Paper 25 (“Hearing
`Tr.”).
`
`Related Matters
`B.
`According to Petitioner, the ’183 patent is the subject of the following
`district court litigation: UUSI, LLC v. Apple Inc., No. 3-18-cv-04637 (N.D.
`Cal.); and UUSI, LLC v. Apple Inc., No. 2:17-cv-13798 (E.D. Mich.), which
`has been transferred to the Northern District of California. Pet. 81. Patent
`Owner indicates that the ’183 patent is also the subject of UUSI, LLC v.
`Samsung Electronics Co., No. 1:15-cv-00146 (W.D. Mich.). Paper 3, 2.
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control No. 90/012,439 (“the ’439 Reexamination
`Proceeding” or “the ’439 Reexamination”), certificate (“Reexam. Cert. C1”)
`issued April 29, 2013 (Ex. 1006, 1); and Ex Parte Reexamination Control
`No. 90/013,106 (“the ’106 Reexamination Proceeding” or “the ’106
`Reexamination”), certificate (“Reexam. Cert. C2”) issued June 27, 2014
`(Ex. 1007, 24). The challenged claims were amended or added during the
`reexaminations. Ex. 1006, 2–3; Ex. 1007, 27–28.
`The ’183 patent is the subject of an earlier-filed inter partes review
`proceeding, Samsung Electronics Co. v. UUSI, LLC, Case IPR2016-00908
`(“Samsung IPR”). Pet. 71; Paper 3, 1. On June 18, 2019, the Federal
`Circuit vacated the final written decision in the Samsung IPR, in which the
`Board determined that Samsung had not demonstrated unpatentability of any
`claims, and remanded to the Board for further proceedings. Samsung Elecs.
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`Co. v. UUSI, LLC, 775 F. App’x 692, 697 (Fed. Cir. 2019) (“Samsung
`Appeal Opinion”).
`Petitioner has also filed five other petitions challenging claims of the
`’183 patent under various grounds in IPR2019-00355, IPR2019-00356,
`IPR2019-00357, IPR2019-00358, and IPR2019-00360. Paper 3, 1. We
`denied institution of review in IPR2019-00355, IPR2019-00356, IPR2019-
`00357, and IPR2019-00360. IPR2019-00355, Paper 14; IPR2019-00356,
`Paper 14; IPR2019-00357, Paper 12; IPR2019-00360, Paper 12. We
`instituted trial in IPR2019-00358 on August 5, 2019. IPR2019-00358,
`Paper 12.
`
`The ’183 Patent
`C.
`The ’183 patent, titled “Capacitive Responsive Electronic Switching
`Circuit,” was filed January 31, 1996, and issued August 18, 1998. Ex. 1001,
`codes (22), (45), (54). The ’183 patent has expired. Prelim. Resp. 17.
`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 2:40–41. Instead, such switches detect an operator’s touch and
`use solid state electronics to switch loads or activate mechanical relays. Id.
`at 2:42–44. “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. As background, the ’183 patent describes three methods used by
`capacitive touch switches to detect an operator’s touch, one of which relies
`on the change in capacitive coupling between a touch terminal and ground.
`Id. at 3:13–15, 3:44–46. In this method, “[t]he touch of an operator then
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`provides a capacitive short to ground via the operator’s own body
`capacitance.” Id. at 3:52–55. Figure 8, reproduced below, is an example
`that makes use of this method.
`
`Figure 8 depicts a “touch circuit” in which, when a pad (not shown) is
`touched to create a short to ground via terminal 451, transistor 410 turns on
`and connects a high frequency input at 201 to resistor/capacitor circuit
`416/418, thus triggering Schmitt Trigger 420 to provide control output 401.
`Id. at 14:47–52, 15:17–47. 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.
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`Figure 4 of the ’183 patent is reproduced below.
`
`
`Figure 4 is a block diagram of a capacitive responsive electronic switching
`circuit according to a first embodiment of the ’183 patent. Id. at 7:23–25.
`As depicted in Figure 4, the electronic switching circuit of the first
`embodiment comprises voltage regulator 100, oscillator 200, floating ground
`generator 300, touch circuit 400, touch pad 450, and microcontroller 500.
`Id. at 11:64–12:33.
`Voltage regulator 100 converts a received 24 volts (V) AC voltage to
`a DC voltage and supplies a regulated 5 V DC power to oscillator 200 via
`lines 104 and 105. Id. at 11:67–12:2. The 24 volt AC input may in turn be
`generated from 110 V AC 60 Hz commercial power line via a transformer
`(not shown), or a DC battery may be used in place of the 24 v AC input. Id.
`at 13:23–31. Voltage regulator 100 also supplies oscillator 200 with 26 V
`DC power via line 106. Id. at 12:2–3.
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`Upon being powered by voltage regulator 100, oscillator 200
`generates a square wave with a frequency of 50 kHz, or preferably greater
`than 800 kHz, and having an amplitude of 26 V peak. Id. at 12:6–9.
`Floating common generator 300 receives the 26 V peak square wave from
`oscillator 200, and outputs a regulated floating common that is 5 volts below
`the square wave output from oscillator 200 and has the same phase and
`frequency as the received square wave. Id. at 12:14–18. This floating
`common output is supplied to touch circuit 400 and microcontroller 500 via
`line 301 such that the output square wave from oscillator 200 and floating
`common output from floating common generator 300 provide power to
`touch circuit 400 and microcontroller 500. Id. at 12:18–23.
`Touch circuit 400 senses capacitance from touch pad 450 via line 451
`and outputs a signal to microcontroller 500 via line 401 upon detecting a
`capacitance to ground at touch pad 450 that exceeds a threshold value. Id. at
`12:24–27. Figure 8 reproduced above describes touch circuit 400 in detail.
`Id. at 12:27–28.
`Upon receiving an indication from touch circuit 400 that a sufficient
`capacitance to ground is present at touch pad 450, microcontroller 500
`outputs a signal to load-controlling microcontroller 600 via line 501, which
`is preferably a two way optical coupling bus. Id. at 12:29–34.
`Microcontroller 600 then responds in a predetermined manner to control
`load 700. Id. at 12:33–35.
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`Figure 11 of the ’183 patent is reproduced below.
`
`
`Figure 11 is a block diagram of a capacitive responsive electronic switching
`circuit according to a second embodiment of the ’183 patent. Id. at 7:43–45.
`As depicted in Figure 11, the second embodiment discloses a “multiple
`touch pad circuit,” which is a variation of the electronic switching circuit of
`the first embodiment discussed above in that the multiple touch pad circuit
`includes “an array of touch circuits” 9001 through 900nm, where each
`element of the array includes touch circuit 400 described in Figures 4 and 8
`above, as well as touch pad 450 depicted in Figure 4. Id. at 18:34–43.
`In this “multiple touch pad circuit” embodiment, microcontroller 500
`selects each row of touch circuits 9001 to 900nm by providing the signal from
`oscillator 200 to selected rows of touch circuits. Id. at 18:43–46. The ’183
`patent describes that “[i]n this manner, microcontroller 500 can sequentially
`activate the touch circuit rows and associate the received inputs from the
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`columns of the array with the activated touch circuit(s).” Id. at 18:46–49. In
`other words, the microcontroller selects successive rows of the touch circuit
`array by providing the signal from oscillator 200 sequentially to each row,
`such that a particular activated touch circuit is detected by the
`microcontroller via association of an activated row with received input from
`a column line of the array (thereby detecting the position or the location of a
`touch by the row and column of the array). Id. at 18:43–49.
`The ’183 patent recognizes that placing capacitive touch switches in
`dense arrays, as in Figure 11, 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 4:4–7. Another known
`method of addressing this problem is to adjust the sensitivity of the touch
`pad such that the operator’s finger must entirely overlap a touch terminal.
`Id. at 4:8–14. “Although these methods (guard rings and sensitivity
`adjustment) have gone a considerable way in allowing touch switches to be
`spaced in comparatively close proximity, a susceptibility to surface
`contamination remains as a problem.” Id. at 4:14–18.
`The ’183 patent uses the technique of Figure 11 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. Id. at 11:19–29. Operating at these
`frequencies also improves sensitivity, allowing close control of the
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`proximity required for actuation of small-sized touch terminals in a close
`array, such as a keyboard. Id. at 5:48–57.
`Figure 6 of the ’183 patent is reproduced below.
`
`
`
`Figure 6 shows an example of an 800 kHz oscillator. Id. at 13:32–33.
`The ’183 patent describes that oscillator 200 shown in Figure 6
`preferably includes a square wave generator 210 for generating a 5 Volts
`peak square wave having the desired frequency. Id. at 13:33–36. “To
`provide an 800 kHz output, resistor 218 preferably has a 10.0 k(cid:525) value,
`resistor 222 preferably has a 1.78 k(cid:525) value, and capacitor 224 is preferably a
`220 pF capacitor.” Id. at 13:52–55.
`According to the ’183 patent,
`As will be apparent to those skilled in the art, the values of the
`resistors and capacitors utilized in oscillator 200 may be varied
`from those disclosed above to provide for different oscillator
`output frequencies. As discussed above, however, oscillator 200
`is preferably constructed so as to output a square wave having a
`frequency of 50 kHz or greater, and more preferably, of 800 kHz
`or greater.
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`Id. at 14:22–28. “The present combination was chosen to keep the oscillator
`voltage down and allow operation at 800 kHz to minimize cross talk.” Id. at
`15:2–5.
`The ’183 patent further describes that the oscillator of Figure 6 may
`be included in the “multiple touch pad circuit” shown in Figure 11. In
`describing various aspects of the second embodiment (i.e., the “multiple
`touch pad circuit” embodiment) depicted in Figure 11, the ’183 patent
`explains that the oscillator “may be slightly modified from that shown in
`FIG. 6 to include a transistor (not shown) coupled between the oscillator
`output and ground with [its] base connected to microcontroller 600 such that
`microcontroller 600 may selectively disable the output of oscillator 200.”
`Id. at 18:60–65. The ’183 patent also explains that the Figure 6
`embodiment’s choice of a combination of resistors and capacitors to reduce
`crosstalk is applicable to the multiple touch pad circuit embodiment of
`Figure 11.
`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.
`Id. at 18:66–19:6.
`
`Illustrative Claim
`D.
`Independent claim 83 is illustrative of the challenged claims and is
`reproduced below.
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`83. A capacitive responsive electronic switching circuit for a
`controlled keypad device comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`a microcontroller using the periodic output signal from the
`oscillator, the microcontroller selectively providing
`signal output frequencies to a closely spaced array of
`input touch terminals of a keypad, the input touch
`terminals comprising first and second input touch
`terminals, wherein a peak voltage of the signal output
`frequencies is greater than a supply voltage;
`the first and second input touch terminals defining areas for an
`operator to provide an input by proximity and touch; and
`a detector circuit coupled to said oscillator for receiving said
`periodic output signal from said oscillator, and coupled to
`said 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 keypad 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.
`Id. at Reexam. Cert. C2, 5:43–6:2.
`Independent claim 27 was cancelled in ex parte reexamination. Ex.
`1001, Reexam. Cert. C2, 1:17. Nonetheless, because claims 28, 32, and 36,
`which depend from claim 27, are challenged, we consider claim 27 given
`that its requirements are incorporated into those dependent claims. Pet. 3.
`Independent claim 27 does not include the requirement “wherein a peak
`voltage of the signal output frequencies is greater than a supply voltage,” but
`is otherwise identical to claim 83. Id. at Reexam. Cert. C1, 1:53–2:10.
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`Applied References and Declarations
`E.
`Petitioner relies upon the following references in its challenges to
`patentability.
`
`Designation1 Exhibit No.
`Issue Date
`Reference
`U.S. Patent No. 4,561,002 Dec. 24, 1985 Chiu
`Ex. 1005
`U.S. Patent No. 4,922,061 May 1, 1990 Meadows
`Ex. 1013
`U.S. Patent No. 4,418,333 Nov. 29, 1983 Schwarzbach Ex. 1014
`U.S. Patent No. 4,731,548 Mar. 15, 1988
`Ingraham ’548 Ex. 1016
`U.S. Patent No. 4,308,443 Dec. 29, 1981 Tucker
`Ex. 1019
`U.S. Patent No. 4,328,408 May 4, 1982
`Lawson
`Ex. 1032
`
`Petitioner also relies on two declarations from Dr. Phillip D. Wright in
`support of its Petition and Reply. Ex. 1003 (“Wright Declaration”);
`Ex. 1034 (“Second Wright Declaration”). Patent Owner relies on the
`Declaration of Dr. Darran Cairns (Ex. 2004, “Cairns Declaration”) in
`support of its Patent Owner Response.
`
`
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
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`Instituted Grounds of Unpatentability
`F.
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Claim(s) Challenged
`27, 83–85, 90
`86–88
`
`Statutory Basis
`§ 103(a)2
`§ 103(a)
`
`91
`
`28, 92
`32, 36, 93
`
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`
`References
`Chiu, Schwarzbach
`Chiu, Schwarzbach, Meadows
`Chiu, Schwarzbach, Ingraham
`’548
`Chiu, Schwarzbach, Tucker
`Chiu, Schwarzbach, Lawson
`
`III. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`We begin our analysis by addressing the level of ordinary skill in the
`art. Petitioner’s declarant, Dr. Wright, opines that a person of ordinary skill
`in the art as of the critical date of the ’183 patent would have had at least a
`Bachelor of Science degree in electrical engineering or a related technical
`field, and two or more years of experience in electrical circuits and sensor
`systems. Wright Decl. ¶ 22. Patent Owner’s declarant, Dr. Cairns, opines
`that “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.” Ex. 2004 ¶ 14.
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’183 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of § 103.
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`These proposals are similar for all purposes relevant to this Final
`Written Decision, and both are consistent with the level of ordinary skill in
`the art reflected in the disclosure of the ’183 patent and the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
`re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Our Decision takes
`both articulations into account. To the extent there exist any material
`differences between the parties’ articulations, we note that the parties do not
`identify any disputed issue that turns on such differences in the level of
`ordinary skill in the art. Our analysis and conclusions in this Final Written
`Decision would be the same regardless of whether Petitioner’s or Patent
`Owner’s definition of level of ordinary skill in the art is adopted.
`
`Claim Construction
`B.
`In an inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b),
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying such
`standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art, at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
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`Petitioner proposes constructions for three claim terms: “providing
`signal output frequencies” recited in independent claims 27 and 83; “supply
`voltage” recited in claim 83; and “coupled” recited in claims 27 and 83. Pet.
`9–13; Reply 1–10.
`Patent Owner disputes Petitioner’s proposed construction for the
`claim term “providing signal output frequencies.” PO Resp. 14–30;
`Sur-reply 1–10. Patent Owner also raises additional claim construction
`issues in the context of its patentability analysis of the challenged claims.
`Specifically, Patent Owner discusses constructions for the claim terms
`“closely spaced array” recited in independent claims 27 and 83 (PO Resp.
`37–39), and “a peak voltage of the signal output frequencies” recited in
`claim 83 (id. at 44–46).
`We discuss each of these terms in turn below. No other claim terms
`need to be construed expressly for purposes of this Final Written Decision.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that only terms that are in controversy need to be construed,
`and “only to the extent necessary to resolve the controversy”); see also
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`review).
`
`“selectively providing signal output frequencies”
`1.
`The challenged independent claims 27 and 83 each recite “the
`microcontroller selectively providing signal output frequencies to a closely
`spaced array of input touch terminals of a keypad.”3 Ex. 1001, Reexam.
`
`3 We refer to the claim term “the microcontroller selectively providing signal
`output frequencies to a closely spaced array of input touch terminals of a
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`Cert. C1, 1:58–60 (claim 27); id., Reexam. Cert. C2, 5:48–50 (claim 83).
`Prior to institution, the main claim construction dispute between the parties
`over the claim term “the microcontroller selectively providing signal output
`frequencies” centered on whether the term requires the recited
`“microcontroller” to select a frequency from multiple frequencies. Patent
`Owner asserted that the challenged claims are so limited (Prelim. Resp. 25–
`30), whereas Petitioner contended, and continues to contend, that they are
`not (Pet. 9–10; Reply 5–10).
`In the Institution Decision, we agreed with Petitioner that claims 27
`and 83 do “not require the microcontroller to select signal output frequencies
`from multiple available frequencies.” Inst. Dec. 31–32. We also recognized
`that the claim language “selectively providing” is on its face ambiguous as
`to what the microprocessor is required to select––frequencies or rows of the
`touch terminals array, or both. Id. at 25–26. After careful consideration of
`the claim language as a whole and the illustrative embodiments described in
`the Specification of the ’183 patent, we resolved the ambiguity according to
`the ’183 patent’s description of the invention in the Specification, and
`preliminarily construed the term “selectively providing signal output
`frequencies” to encompass the microcontroller selecting a row or a portion
`of the array of touch pads to provide signal output frequencies to the array.
`Id. at 31–32. We emphasized, however, the preliminarily nature of our
`construction (see id. at 29, 31, 63) and invited the parties to address the term
`“selectively providing signal output frequencies” further in their papers
`during trial, including how a person of ordinary skill in the art would
`
`
`keypad” commonly recited in independent claims 27 and 83 as the
`“selectively providing limitation” in this Final Written Decision.
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`Exhibit 2017
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`IPR2019-00359
`Patent 5,796,183
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`understand the meaning of the term in the context of the ’183 patent,
`including the Specification. Id. at 30.
`We also noted in the Institution Decision that, after the Preliminary
`Response was filed, the Federal Circuit issued an opinion (Samsung Appeal
`Opinion) in an appeal from the Samsung IPR that also involved the ’183
`patent (both referenced in Section II.B above). Id. at 3. Because the
`Samsung Appeal Opinion discussed claim construction of the claim term
`“the microcontroller selectively providing signal output frequencies to a
`plurality of small sized input touch terminals of a keypad” recited in
`claim 40 (not challenged in this proceeding), we invited the parties to
`address in their papers during trial the import of the Samsung Appeal
`Opinion on the construction of the term “selectively providing signal output
`frequencies” recited in the challenged independent claims in this proceeding.
`Id. at 29–30.
`During the trial, Patent Owner has continued to argue that the
`“selectively providing limitation” requires the microcontroller select a
`frequency from multiple available frequencies. PO Resp. 28–30; Sur-reply
`4, 6–7. In addressing the import of the Federal Circuit’s claim construction
`in the Samsung Appeal Opinion, however, Patent Owner makes an
`alternative (and possibly inconsistent) argument that “the claims do not
`require that the selection of frequency be performed by the microcontroller”
`and that “the ‘183 specification and claims clearly contemplate that the
`‘selection’ of frequencies can be performed by the circuit’s designer” during
`the design of the claimed switching circuit. Sur-reply 5–6.
`In what follows, we first address the issue of whether the “selectively
`providing limitation” requires the microcontroller select a frequency from
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`multiple frequencies during operation of the circuit. We then address Patent
`Owner’s alternative argument in the context of addressing the Federal
`Circuit’s findings in the Samsung Appeal Opinion as they relate to the
`specific claim construction issue raised in this case.
`For the reasons discussed below, we determine that independent
`claims 27 and 83 do not require the microcontroller to select signal output
`frequencies from multiple available frequencies. We also construe the term
`“the microcontroller selectively providing signal output frequencies” to
`encompass the microcontroller selecting a row or a portion of the array of
`touch pads to provide signal output frequencies to the array. Finally, we
`determine that our claim construction in this proceeding is consistent with
`the Federal Circuit’s findings on claim construction in the Samsung Appeal
`Opinion.
`
`a) Whether the Microcontroller Is Required to Select a Frequency
`from Multiple Frequencies
`(1) Claim Language
`We begin our claim construction analysis by considering the language
`of the claims themselves. Phillips, 415 F.3d at 1314. The full claim
`language of the disputed limitation of claim 27 is reproduced below with
`emphases added:
`signal output
`selectively providing
`the microcontroller
`frequencies to a closely spaced array of input touch terminals of
`a keypad, the input touch terminals comprising first and second
`input touch terminals.
`Ex. 1001, Reexam. Cert. C1, 1:58–61 (emphasis added). Claim 83 recites
`essentially the same claim language. Id. at Reexam. Cert. C2, 5:28–51.
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`IPR2019-00359
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`Considering the claim language, we note that the challenged
`independent claims do not recite that the microcontroller provides signal
`output frequencies “selected from multiple frequencies.” The claims recite
`“selectively providing,” not “providing selected frequencies.” Thus, at least
`based on their plain language, the challenged independent claims are not
`limited to require the signal output frequencies be “selected from multiple
`frequencies” as Patent Owner contends.
`Patent Owner argues that the use of the plural “frequencies” in
`“selectively providing signal output frequencies” means that the recited
`“selection” is made from among multiple “frequencies.” PO Resp. 28–29.
`We are not persuaded by this argument because the plurality in “signal
`output frequencies” may be accounted for by the fact that a plurality of
`signals (at least two) are provided to the claimed “first and second input
`touch terminals”—that is, one “signal output frequency” is provided to the
`first input touch terminal, and another “signal output frequency” is provided
`to the second input touch terminal. See Ex. 1001, Reexam. Cert. C1, 1:58–
`61 (claim 27)); Reexam. Cert. C2, 5:28–51 (claim 83).
`Further confirming this, as discussed further below, other independent
`claims at issue in co-pending IPR2019-00358 (e.g., claim 94), recite that a
`signal output frequency is provided to each row of the input touch terminals
`(Ex. 1001, Reexam. Cert. C2, 6:46–50)—i.e., a plurality of signals for the
`number of rows are provided to the array of the touch terminals, one “signal
`output frequency” for each row. In other words, the use of the plural noun
`“frequencies” in the recitation “the microcontroller selectively providing
`signal output frequencies” does not necessarily require the “microcontroller”
`to “select” signal output frequencies from multiple frequencies. Thus, we
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`are not persuaded the plural noun “signal output frequencies” resolves the
`ambiguity in the claim language discussed above—whether the recited
`“selectively providing” by the microcontroller requires selectivity of
`frequency values or selectivity as to when and where to provide signal
`output frequencies to the touch terminal array.
`Additional claim language in claims at issue in IPR2019-00358 (claim
`94 for example) helps resolve this ambiguity in favor of the latter
`interpretation:
`signal output
`selectively providing
`the microcontroller
`frequencies to a closely spaced array of input touch terminals of
`a keypad, wherein the selectively providing comprises the
`microcontroller selectively providing a signal output frequency
`to each row of the closely spaced array of input touch terminals
`of the keypad.
`Ex. 1001, Reexam. Cert. C2, 6:44–50 (emphasis added). Patent Owner
`admits that the claim language “selectively providing . . . to each row”
`recited in the wherein clause requires the microcontroller to “select . . .
`which rows of the array will receive the signal.” PO Resp. 29. Thus, the
`plain language of claim 94 indicates that the “selectively providing” recited
`in the “selectively providing limitation” “comprises” or encompasses
`selection of rows by the microcontroller to provide the signal output
`frequencies.
`Patent Owner asserts that this interpretation is improper because it
`renders the wherein clause superfluous. PO Resp. 28–29; Sur-reply 7.
`According to Patent Owner, if the “selectively providing limitation” is
`interpreted to “cover the selection of ‘which row’ receives the signal,”
`“selectively providing . . . to each row” recit
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