Paper No. 55
`Filed: December 17, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
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`____________________
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`Case IPR2016-00908
`Patent No. 5,796,183
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`____________________
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`PATENT OWNER’S AMENDED NOTICE OF APPEAL
`PURSUANT TO 37 C.F.R. § 90.2(a)
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`Filed: December 17, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
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`____________________
`
`
`Case IPR2016-00908
`Patent No. 5,796,183
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`____________________
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`PATENT OWNER’S AMENDED NOTICE OF APPEAL
`PURSUANT TO 37 C.F.R. § 90.2(a)
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`Case IPR2016-00908
`Patent No. 5,796,183
`Pursuant to 35 U.S.C. §§ 141(c) and 319, and 37 C.F.R. § 90.2(a), notice is
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`hereby given that Patent Owner UUSI, LLC d/b/a Nartron (“Nartron”) appeals to the
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`United States Court of Appeals for the Federal Circuit in Case No. IPR2016-00908
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`from: (i) the Final Written Decision entered on September 17, 2020 (Paper 50)
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`(“FWD”) by the Patent Trial and Appeal Board (“the Board”); and (ii) the Order
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`denying Nartron’s Petition for Director Rehearing entered on October 15, 2021
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`(Paper 54); and (iii) all underlying orders, decisions, rulings, and opinions related
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`thereto and included therein, to the extent that such were decided against Nartron.
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`I.
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`THE AMENDED NOTICE OF APPEAL IS TIMELY
`This Amended Notice of Appeal is timely under 35 U.S.C. § 142, 37 C.F.R.
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`§ 90.3, and Rule 15(a)(1) of the Federal Rules of Appellate Procedure. On October
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`16, 2020, Nartron filed a first Notice of Appeal from the FWD with the Director, the
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`Board, and the Federal Circuit. That appeal was docketed as Federal Circuit Case
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`No. 21-1060. On March 17, 2021, Nartron filed its Opening Brief at the Federal
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`Circuit. Nartron’s Opening Brief argued, inter alia, that the parts of the FWD that
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`held patent claims unpatentable were void, because the administrative patent judges
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`(APJs) who decided the case were unconstitutional principal officers under Arthrex,
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`Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Subsequently, on June
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`21, 2021, the Supreme Court decided United States v. Arthrex, Inc., 141 S. Ct. 1970
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`(2021), which held that APJs are unconstitutional principal officers, and ordered the
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`USPTO to institute a Director rehearing process to remedy the violation.
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`On June 23, 2021, the Federal Circuit sua sponte issued an order directing
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`Nartron to file a brief indicating how the appeal should proceed in light of Arthrex.
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`On July 7, 2021, Nartron filed that brief, stating that it believed the case should be
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`remanded to the USPTO for Director Rehearing. On August 3, 2021, the Federal
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`Circuit remanded the case to the USPTO to allow Nartron to file a Request for
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`Director Rehearing. The remand order directed Nartron to file its Request for
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`Director Rehearing within 30 days of the remand order. Nartron timely filed its
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`Request for Director Rehearing (Paper 53) with the USPTO on September 2, 2021.
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`In the Request, Nartron argued that the Director should rehear the case, because the
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`panel never addressed whether there was a reasonable expectation of success in
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`combining the two primary references, and Petitioner failed to prove a reasonable
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`expectation of success in combining those references with a third reference.
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`On October 15, 2021, the USPTO issued an Order (Paper 54) denying
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`Nartron’s Request for Director Rehearing. The Order contains no analysis, and is
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`not signed by the Director (or anyone else). On October 25, 2021, Nartron filed a
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`Notice with the Federal Circuit, indicating that Nartron’s Request for Director
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`Review had been denied. On November 12, 2021, the Federal Circuit issued an
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`Order directing Nartron to state, within seven days, whether it intended to file a new
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`or amended notice of appeal, to challenge the denial of Director review. On
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`November 15, 2021, Nartron advised the Federal Circuit that it intended to file an
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`amended notice of appeal, to challenge the denial of Director review.
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`Under 37 C.F.R. § 90.3(b)(1), “[a] timely request for rehearing will reset the
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`time for appeal or civil action to no later than sixty-three (63) days after action on
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`the request.” Nartron’s Request for Director Rehearing was timely, because it was
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`filed within the 30 day period set by the Federal Circuit in its remand order.
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`Accordingly, Nartron’s deadline to file this Amended Notice of Appeal is sixty-three
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`days from the October 15, 2021 Order (Paper 54) denying Nartron’s request for
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`Director review: that is, December 17, 2021. This Amended Notice of Appeal is
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`being filed by that deadline. Therefore, it is timely.
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`II.
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`ISSUES TO BE RAISED ON APPEAL
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues that Nartron may raise
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`in this appeal include, but are not necessarily limited to:
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`A. On Appeal from the Final Written Decision:
`(1) The Board’s erroneous determination that a person of ordinary skill
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`in the art (“POSITA”) would have had a motivation to combine U.S. Pat. No.
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`5,087,825 to Ingraham (“Ingraham I”) with U.S. Pat. No. 5,594,222 to
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`Caldwell (“Caldwell”) (see, e.g., FWD at 32);
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`(2) The Board’s failure to explain whether and why a POSITA would
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`have had a reasonable expectation of success in combining Ingraham I with
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`Caldwell, where Nartron specifically challenged the asserted Ingraham
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`I/Caldwell combination on that ground (see Paper 21 at 27-30);
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`(3) The Board’s unexplained erroneous apparent determination that a
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`POSITA would have had a reasonable expectation of success in combining
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`Ingraham I with Caldwell;
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`(4) The Board’s erroneous determination that a POSITA would have
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`had a reasonable expectation of success in combining U.S. Pat. No. 5,565,658
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`to Gerpheide (“Gerpheide”) with Ingraham I and Caldwell (FWD at 26-27);
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`(5) The Board’s erroneous determination that Petitioner’s asserted
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`combination of Ingraham I, Caldwell and Gerpheide meets all the elements of
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`claims 40, 41, 43, 45, 61, 64–67, 69, 83, 85, 86, 88, 90, 91, 94, 96, 97, 99,
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`101, and 102 (FWD at 28-53);
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`(6) The Board’s erroneous determination that claims 40, 41, 43, 45, 61,
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`64–67, 69, 83, 85, 86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are obvious
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`over Ingraham I, Caldwell and Gerpheide (FWD at 28-53);
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`(7) The Board’s erroneous determinations that a POSITA would have
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`had: (i) a motivation to combine Gerpheide, Ingraham I and Caldwell with
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`U.S. Pat. No. 5,341,036 to Wheeler (“Wheeler”); and (ii) a reasonable
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`expectation of success in making such a combination (FWD at 53-55);
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`(8) The Board’s erroneous ruling that claims 47, 48, 62, 63, and 84 are
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`obvious over Ingraham I, Caldwell, Gerpheide and Wheeler (FWD at 53-58);
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`(9) The Board’s erroneous claim constructions, whether explicit or
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`implicit, to the extent that they led the Board to erroneously conclude that any
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`challenged claim was obvious;
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`(10) The Board’s erroneous interpretations of the ‘183 patent or the
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`cited prior art, whether explicit or implicit, to the extent that they led the Board
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`to erroneously conclude that any challenged claim was obvious; and
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`(11) All other issues decided adversely to Nartron in any orders,
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`decisions, rulings, and opinions underlying or supporting the FWD.
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`B. On Appeal from the Denial of Director Review:
`(1) The decision denying Director review violates Arthrex and the
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`Appointments Clause because it is not signed by the USPTO Director, making
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`it impossible to determine whether the Director had any involvement in the
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`decision denying Review, and if so, how much involvement.
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`(2) The decision denying Director review violates Arthrex and the
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`Appointments Clause because, even if it was decided by Andrew Hirshfeld
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`(and there is no indication that it was), Mr. Hirshfeld is not a principal officer,
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`because he was not appointed by the President and confirmed by the Senate.
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`(3) The decision denying Director review is invalid because it does not
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`provide any explanation for why Director review was denied. This violates
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`Arthrex, which intended Director review to be a meaningful check on the
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`discretion of APJs—not a mere rubber-stamp.
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`(4) The decision denying Director review is invalid because it violates
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`5 U.S.C. § 555(e), which provides that “[p]rompt notice shall be given of the
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`denial in whole or in part of a written application, petition, or other request of
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`an interested person made in connection with any agency proceeding. Except
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`in affirming a prior denial or when the denial is self-explanatory, the notice
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`shall be accompanied by a brief statement of the grounds for denial.” The
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`decision denying Director review did not give any “statement of the grounds
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`for denial,” and it does not simply “affirm a prior denial” of a prior petition.
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`(5) The decision denying Director review is invalid because the
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`USPTO’s rules and procedures for the Director rehearing process underlying
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`the Order are invalid. The USPTO did not follow proper notice and approval
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`procedures, including publishing the rules and procedures in the Federal
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`Register. 5 U.S.C. §§ 552(a)(1), 553.
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`(6) The Denial was “arbitrary, capricious, an abuse of discretion, or
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`otherwise not in accordance with law,” was “contrary to constitutional right,
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`power, privilege, or immunity,” was “in excess of statutory jurisdiction,
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`authority, or limitations, or short of statutory right,” and was “without
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`observance of procedure required by law.” 5 U.S.C. §§706(a)-(d).
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`III. ATTACHMENTS
`To permit the USPTO to evaluate this Amended Notice of Appeal, including
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`its timeliness, the following documents are attached to the Notice:
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`(cid:120)
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`(cid:120)
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`Exhibit A: The Board’s September 17, 2020 FWD (Paper 50);
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`Exhibit B: The Federal Circuit’s June 23, 2021 Order directing
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`Nartron to state how the appeal should proceed in light of Arthrex;
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`(cid:120)
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`Exhibit C: The Federal Circuit’s August 3, 2021 Order remanding the
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`case so that Nartron could seek Director review (Case 21-1060, Dkt. 36);
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`(cid:120)
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`Exhibit D: The USPTO’s October 15, 2021 Order denying Nartron’s
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`request for Director review (Paper 54); and
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`(cid:120)
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`Exhibit E: The Federal Circuit’s November 12, 2021 Order approving
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`Nartron’s filing of an amended notice of appeal (Case 21-1060, Dkt. 38).
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`IV. FILING AND SERVICE
`Per 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a)(1), this amended notice of appeal
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`is being filed with the Director, and a copy is also being filed with the Board. Per
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`Federal Circuit Rule 15(a)(1) and 37 C.F.R. § 90.2(a)(2), Nartron is also filing this
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`amended notice with the clerk of the Court of Appeals for the Federal Circuit.
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`WHEREFORE, for the foregoing reasons, Nartron respectfully requests that
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`this amended notice of appeal be docketed, and that the USPTO send the certified
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`list and copies of the decisions being appealed to the Federal Circuit within forty
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`days of the Federal Circuit docketing this amended notice of appeal, pursuant to
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`Federal Circuit Rule 17(b)(1), 35 U.S.C. § 143, and 15 U.S.C. § 1071(a)(3).
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`Dated: December 17, 2021
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`Respectfully submitted,
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`By:
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`/s/ Stephen Underwood
`Stephen Underwood (Reg. # 77,977)
`Lawrence M. Hadley (pro hac vice
`admission pending)
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`GLASER WEIL FINK HOWARD
`AVCHEN & SHAPIRO LLP
`10250 Constellation Blvd., 19th Floor
`Los Angeles, California 90067
`Telephone: (310) 553-3000
`Facsimile: (310) 556-2920
`Email: sunderwood@glaserweil.com
`Email: lhadley@glaserweil.com
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`Counsel for Patent Owner
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`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
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`Paper 50
`Date: September 17, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`v.
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`IPR2016-00908
`Patent 5,796,183
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`
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`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`JIVANI, Administrative Patent Judge.
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`
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`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 314, 318
`
`I.
`INTRODUCTION
`A. Background and Summary
`Samsung Electronics Co., Ltd., (“Petitioner”) sought inter partes
`review of claims 37–41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96,
`97, 99, 101, and 102 of U.S. Patent No. 5,796,183 (Ex. 1001, “the ’183
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`IPR2016-00908
`Patent 5,796,183
`patent”), owned by UUSI, LLC d/b/a Nartron (“Patent Owner”). Paper 2
`(“Petition” or “Pet.”). Patent Owner filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted an inter partes review of claims 40, 41, 43, 45, 47,
`48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the “Earlier
`Instituted Claims”) pursuant to 35 U.S.C. § 314. Paper 12 (“Decision on
`Institution” or “Dec. on Inst.”). We did not institute, however, an inter
`partes review of claims 37–39 at that time because we determined Petitioner
`had not established a reasonable likelihood that it would prevail with respect
`to those claims. Id.
`Petitioner sought rehearing of our decision denying review of claims
`37–39 because, according to Petitioner, we erred in our construction of the
`term “supply voltage,” as recited in independent claim 37. Paper 14, 1.
`Having considered Petitioner’s arguments for rehearing, we denied its
`request and maintained our preliminary construction of the term “supply
`voltage,” as recited in claim 37. Paper 17, 5–7.
`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 21, “PO Resp.”), and Petitioner filed a Reply thereto (Paper 24,
`“Reply”). An oral hearing was conducted on June 22, 2017. The record
`contains a transcript of the hearing (Paper 34). On December 13, 2017, we
`entered a Final Written Decision concluding that Petitioner had not shown
`by a preponderance of the evidence that the instituted claims were
`unpatentable. Paper 35, 24.
`Petitioner appealed our Decision to the United States Court of
`Appeals for the Federal Circuit, which vacated our Decision and remanded
`the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed.
`Cir. 2019). As to the earlier instituted claims, the Court instructed that we
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`should consider “whether Samsung has shown that there would have been a
`reasonable expectation of success in combining the teaching of Gerpheide
`with the teachings of Ingraham [I]/Caldwell to arrive at the claimed
`invention.” Id. at 697. The Court further instructed us to “consider the
`patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the
`Supreme Court of the United States held that a decision to institute under 35
`U.S.C. § 314 may not institute on fewer than all claims challenged in the
`petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`Pursuant to the Federal Circuit’s instruction in this case and in light of
`SAS Inst., Inc., we modified our Decision on Institution to institute review of
`claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and
`Gerpheide. Paper 40. We further held a teleconference on August 15, 2019,
`with respective counsel for the parties, to hear their proposals on how to
`proceed with this trial. Paper 41, 2. Having considered the parties’
`proposals, we authorized the parties to submit concurrent briefs and
`subsequent responses addressing the following issues (id. at 6):
`(1) the Federal Circuit’s determination in the context of the Earlier
`Instituted Claims that “the claims are not limited to situations in which
`different frequencies are provided to different rows” and that “[a] reasonable
`expectation of success thus only requires that different frequencies be
`provided to the entire pad;”
`(2) whether Petitioner has shown that there would have been a
`reasonable expectation of success in combining the teaching of Gerpheide
`with the teachings of Ingraham I, Caldwell, and Wheeler (in certain
`instances) to arrive at the inventions of the Earlier Instituted Claims;
`(3) our construction in our Decision on Institution of the term “supply
`voltage,” as recited in independent claim 37; and
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`(4) whether Petitioner has shown by a preponderance of the evidence
`that claims 37–39 are rendered obvious over the asserted combination of
`Ingraham I, Caldwell, and Gerpheide.
`On October 3, 2019, Petitioner submitted its Opening Brief on
`Remand (Paper 43, “Pet. Br.”) and Patent Owner submitted its Opening
`Brief on Remand (Paper 44, “PO Br.”). The parties filed cross responses on
`October 17, 2019. Paper 45 (“PO Remand Resp.”); Paper 46 (“Pet. Remand
`Resp.”).
`On December 11, 2019, with our prior authorization, Petitioner filed a
`brief addressing Patent Owner’s statements in co-pending proceeding
`IPR2019-00358, which reviews certain claims of the ’183 patent. Paper 47.
`Patent Owner filed an opposition thereto on December 13, 2019. Paper 49.
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) as to the patentability of
`the challenged claims before us on remand. Based on the complete trial
`record, Petitioner has shown by a preponderance of the evidence that claims
`40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and
`102 are unpatentable. Petitioner has failed to show by a preponderance of
`the evidence that claims 37–39 are unpatentable.
`B. Real Parties in Interest
`Petitioner identifies Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc., as real parties in interest. Pet. 1. Patent Owner
`identifies only itself, namely UUSI, LLC d/b/a/ Nartron, as a real party
`interest. Paper 7, 1. Neither party contests these identifications.
`C. Related Matters
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
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`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014
`(“Reexam 2”). Claims 37–39 were added during Reexam 1, where the
`Earlier Instituted Claims were added during Reexam 2. Ex. 1006, 2–3;
`Ex. 1007, 27–28.
`Claims 37–39, 94, 96–99, 101–109, and 115–117 of the ’183 patent
`are the subject of an inter partes review pending before this Board on
`grounds applying art not at issue in this proceeding. Apple, Inc. v. UUSI,
`LLC d/b/a Nartron, IPR2019-00358, Paper 12 at 11–12 (PTAB Aug. 5,
`2019) (Decision on Institution). Further, claims 27, 28, 32, 36, 83–88, and
`90–93 of the ’183 patent are the subject of an inter partes review pending
`before this Board on grounds applying art not at issue in this proceeding.
`Apple, Inc. v. UUSI, LLC d/b/a Nartron, IPR2019-00359, Paper 12 at 12
`(PTAB Aug. 5, 2019) (Decision on Institution).
`The ’183 patent is the subject of ongoing litigation between the parties
`in the Western District of Michigan: UUSI, LLC d/b/a Nartron v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No.
`1:15-cv-00146-JTN, originally filed on February 13, 2015 (W.D. Mich.)
`(the “District Court litigation”). Pet. 1. The District Court litigation is
`stayed and administratively closed until resolution of this inter partes
`review. Order, Case No. 1:15-cv-00146-JTN, Dkt. No. 137 (filed
`Jan. 13, 2017).
`D. The ’183 Patent
`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. Pet. 11; Prelim. Resp. 7.
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`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
`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.
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`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
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`and connects 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.
`Figure 4 of the ’183 patent is reproduced below.
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`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 AC voltage to a DC voltage
`and supplies a regulated 5 volts (V) DC power to oscillator 200 via lines 104
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`and 105. Id. at 11:67–12:2. Voltage regulator 100 also supplies oscillator
`200 with 26 V DC power via line 106. Id. at 12:2–3.
`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.
`
`8
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`IPR2016-00908
`Patent 5,796,183
`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
`columns of the array with the activated touch circuit(s).” Id. at 18:46–49. In
`
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`IPR2016-00908
`Patent 5,796,183
`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. 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
`proximity required for actuation of small-sized touch terminals in a close
`array, such as a keyboard. Id. at 5:48–57.
`
`10
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`IPR2016-00908
`Patent 5,796,183
`E. Illustrative Claims
`Claims 37 and 40 illustrate the claimed subject matter and are
`reproduced below with bracketed material added.
`37. A capacitive responsive electronic switching circuit for a
`controlled device comprising:
`[37a] an oscillator providing a periodic output signal
`having a predefined frequency, wherein an oscillator voltage is
`greater than a supply voltage;
`[37b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a closely spaced array of input
`touch terminals of a keypad, the input touch terminals
`comprising first and second input touch terminals;
`[37c] the first and second touch terminals defining areas
`for an operator to provide an input by proximity and touch; and
`[37d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said first and second touch terminals, said detector
`circuit being responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said first and second touch
`terminals when proximal or touched by the operator to provide
`a control output signal for actuation of the controlled device,
`said detector circuit being configured to generate said control
`output signal when the operator is proximal or touches said
`second touch terminal after the operator is proximal or touches
`said first touch terminal.
`
`40. A capacitive responsive electronic switching circuit
`comprising:
`[40a] an oscillator providing a periodic output signal
`having a predefined frequency;
`[40b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a plurality of small sized input
`touch terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
`
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`IPR2016-00908
`Patent 5,796,183
`output frequency to each row of the plurality of small sized
`input touch terminals of the keypad;
`[40c] the plurality of small sized input touch terminals
`defining adjacent areas on a dielectric substrate for an operator
`to provide inputs by proximity and touch; and
`[40d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said input touch terminals, said detector circuit being
`responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said touch terminals when
`proximal or touched by the operator to provide a control output
`signal,
`[40e] wherein said predefined frequency of said oscillator
`and said signal output frequencies are selected to decrease a
`first impedance of said dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`
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`103(a)
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`IPR2016-00908
`Patent 5,796,183
`F. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §1
`Reference(s)/Basis
`37–41, 43, 45, 61,
`64–67, 69, 83, 85, 86,
`88, 90, 91, 94, 96, 97,
`99, 101, and 102
`47, 48, 62, 63, and 84 103(a)
`
`G. Testimony
`Petitioner supports its challenges with a declaration of Dr. Vivek
`Subramanian (Ex. 1002), filed contemporaneously with the Petition, and a
`rebuttal declaration of Dr. Subramanian (Ex. 1017), filed contemporaneously
`with the Reply. Dr. Subramanian testified further by deposition on
`February 3, 2017, and a transcript of his testimony has been entered into
`evidence. Ex. 2009.
`
`Ingraham I2, Caldwell3,
`Gerpheide4
`
`Ingraham I, Caldwell,
`Gerpheide, Wheeler5
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 103 that became effective on March 16, 2013. Because the ’183
`patent issued from an application with an effective filing date earlier than
`March 16, 2013, we apply the pre-AIA version of the statutory basis for
`unpatentability.
`
` 2
`
` U.S. Patent No. 5,087,825, issued Feb. 11, 1992, (Ex. 1007, “Ingraham I”)
`along with portions of U.S. Patent No. 4,731,548, issued Mar. 15, 1988
`(Ex. 1008, “Ingraham II”) incorporated by reference.
`
` 3
`
` 4
`
` 5
`
` U.S. Patent No. 5,594,222, issued Jan. 14, 1997 (Ex. 1009).
`
` U.S. Patent No. 5,565,658, issued Oct. 15, 1996 (Ex. 1012).
`
` U.S. Patent No. 5,341,036, issued Aug. 23, 1994 (Ex. 1015).
`
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`Patent Owner rebuts Petitioner’s challenges with a declaration of
`Dr. Darran Cairns (Ex. 2002), filed contemporaneously with the Preliminary
`Response, and an additional declaration of Dr. Cairns (Ex. 2010), filed
`contemporaneously with the Patent Owner Response. Dr. Cairns testified
`further by deposition on April 21, 2017, and a transcript of his testimony has
`been entered into evidence. Ex. 1018.
`Neither party seeks to introduce additional testimony after the Federal
`Circuit’s decision remanding the case to us. Paper 41, 3–5.
`H. Level of Ordinary Skill in the Art
`Citing testimony of its declarant, Dr. Subr
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