Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 14
`Entered: July 22, 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 IPR2019-00355
`Patent 5,796,183
`_____________
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 14
`Entered: July 22, 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 IPR2019-00355
`Patent 5,796,183
`_____________
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2019-00355
`Patent 5,796,183
`
`
`
`I. INTRODUCTION
`On November 29, 2018, Apple, Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter
`partes review of claims 61–69, 90, 91, 93, 94, 96–99, 101, 102, and 104 of
`U.S. Patent No. 5,796,183 (“the ’183 patent”). On April 23, 2019, UUSI,
`LLC d/b/a Nartron (“Patent Owner”) filed a Preliminary Response (Paper
`10, “Prelim. Resp.”). Pursuant to a May 22, 2019 Order (Paper 11), the
`parties exchanged briefs further addressing the issue of discretionary denial
`of institution under 35 U.S.C. § 314(a) (Papers 12, 13).
`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 deny the Petition and do not
`institute an inter partes review.
`
`II. BACKGROUND
`A. The ’183 Patent
`The ’183 patent, titled “Capacitive Responsive Electronic Switching
`Circuit,” was filed January 31, 1996, and issued August 18, 1998. Ex. 1001,
`[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
`
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`Patent 5,796,183
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`has been to make use of the capacitance of the human operator.” Id. at 3:12–
`14. The ’183 patent recites 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.
`
`
`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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`IPR2019-00355
`Patent 5,796,183
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`Figure 11 of the ’183 patent is reproduced below.
`
`
`Figure 11 depicts a “multiple touch pad circuit” including “an array of touch
`circuits” 9001 through 900nm. Id. at 18:34–43. The microcontroller selects
`successive rows of the touch circuit array by providing the signal from
`oscillator 200 sequentially to each row. Id. at 18:43–46. 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
`18:46–49.
`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
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`Patent 5,796,183
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`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.
`
`B. The Claims
`Independent claim 105 is illustrative of the challenged claims and is
`reproduced below.
`105. 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
`
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`IPR2019-00355
`Patent 5,796,183
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`terminals 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;
`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.
`Ex. 1001, 41.
`
`C. Prior Art Relied Upon
`Petitioner relies upon the following prior art references (Pet. 3–4):
`• U.S. Patent No. 5,572,205 (“Caldwell ’205”), filed March 29,
`1993, issued November 5, 1996. Ex. 1004.
`• U.S. Patent No. 4,758,735 (“Ingraham ’735”), filed April 15,
`1987, issued July 19, 1988. Ex. 1017.
`• U.S. Patent No. 4,922,061 (“Meadows ’061”), filed July 20,
`1989, issued May 1, 1990. Ex. 1013.
`• U.S. Patent No. 4,560,954 (“Leach ’954”), filed December 24,
`1981, issued December 24, 1985. Ex. 1008.
`Petitioner also relies on the Declaration of Dr. Phillip Wright. Ex. 1003.
`
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 61–69, 90, 91, 93, 94, 96–99, 101, 102,
`and 104 on the following grounds of unpatentability (Pet. 3):
`
`Claims
`105, 106,
`115, 116,
`40, 45, 47,
`48
`107–109,
`41–43
`37–39
`
`References
`Caldwell ’205 and Ingraham ’735
`
`Basis
`§ 103(a)1
`
`Caldwell ’205, Ingraham ’735, and
`Meadows ’061
`Caldwell ’205, Ingraham ’735, and
`Leach’954
`
`§ 103(a)
`
`§ 103(a)
`
`E. Real Parties in Interest
`Each party identifies itself as the real party in interest. Pet. 80; Paper
`
`3, 1.
`
`F. Related Proceedings
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
`and 90/013,106, certificate issued June 27, 2014. Exs. 1006, 1007. The
`challenged claims were amended or added during the reexaminations.
`Ex. 1006, 2; Ex. 1007, 27.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the application from which the ’183 patent issued
`was filed before this date, the pre-AIA versions of §§ 102 and 103 apply.
`
`
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`IPR2019-00355
`Patent 5,796,183
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`
`The ’183 patent is the subject of an earlier-filed inter partes review
`proceeding, Samsung v. UUSI, IPR2016-00908 (“the Samsung IPR”). Pet.
`80; Paper 3, 1. The Federal Circuit recently 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. Co. v. UUSI, LLC, No.
`2018-1310, 2019 WL 2511739, at *5 (Fed. Cir. June 18, 2019) (“Samsung
`Appeal Opinion”). For the reasons explained below, the Federal Circuit’s
`Opinion does not affect our Decision here.
`The ’183 patent is also the subject of ongoing litigation: UUSI v.
`Apple Inc., Case No. 3-18-cv- 04637 (N.D. Cal.); and UUSI, LLC d/b/a
`Nartron v. Samsung Electronics Co., Case No. 1:15-cv-00146-JTN (W.D.
`Mich.). Pet. 80. Both cases are stayed pending resolution of the Samsung
`IPR. Prelim. Resp. 14; Paper 12, 1; Ex. 2001 ¶ 13.
`Petitioner has also concurrently filed five other Petitions challenging
`claims of the ’183 patent under various grounds: IPR2019-00356, IPR2019-
`00357, IPR2019-00358, IPR2019-00359, and IPR2019-00360. Paper 3,
`1–2.
`
`III. ANALYSIS
` A. The Level of Ordinary Skill in the Pertinent Art
`Petitioner’s declarant, Dr. Phillip 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
`
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`circuits and sensor systems. Ex. 1003 ¶ 22. Patent Owner does not
`specifically address this issue.
`On the record before us, we are persuaded that Petitioner’s declarant’s
`articulation is consistent with the problems and solutions in the ’183 patent
`and the prior art of record. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995) (“In determining this skill level, the court may consider
`various factors including type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” (citations and internal quotations omitted)).
`
`B. Claim Construction
`As the Petition was filed after November 13, 2018, we adhere to the
`same claim construction standard that would be used to construe the claim in
`a civil action under 35 U.S.C. § 282(b), following Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc).2 Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340–41 (Oct. 11,
`2018) (codified at 37 C.F.R. § 42.100(b) (2019)). “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)
`
`
`2 We note that, because the ’183 patent has expired, our claim interpretation
`would have followed Phillips regardless of filing date. See In re Rambus
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`9
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`(citing Phillips, 415 F.3d at 1312–17). In particular, claim interpretation “is
`an interpretation that corresponds with what and how the inventor describes
`his invention in the specification.” In re Smith Int’l, Inc., 871 F.3d 1375,
`1383 (Fed. Cir. 2017).
`Moreover, “[t]he words used in the claims must be considered in
`context and are examined through the viewing glass of a person skilled in
`the art.”). Ferguson Beauregard v. Mega Sys., LLC, 350 F.3d 1327, 1338
`(Fed. Cir. 2003); Markman v. Westview Instruments, Inc., 52 F.3d 967, 986
`(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996) (“The focus is on the
`objective test of what one of ordinary skill in the art at the time of the
`invention would have understood the term to mean”).
`Petitioner proposes construction of three claim terms: “providing
`signal output frequencies” required by claims 37, 40, and 105; “supply
`voltage” required by claim 37; and “coupled” required by claims 37, 40,
`105. Pet. 7–11. Patent Owner maintains Petitioner has incorrectly construed
`“providing signal output frequencies,” and proposes a different construction
`for that phrase.3 Prelim. Resp. 22–27.
`For the reasons elaborated below, for purposes of this Decision, it is
`not necessary to decide these claim construction issues. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (claim terms
`need only be construed to the extent necessary to resolve the controversy).
`
`
`3 We note that the Federal Circuit in the Samsung Appeal Opinion construed
`a limitation of claim 40 of the ’183 patent that included the phrase,
`“providing signal output frequencies.” 2019 WL 2511739, at *4. However,
`as stated below, the construction of that claim term is not necessary for
`purposes of this Decision.
`
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`C. Discretionary Denial Based on the Samsung IPR
`Patent Owner argues the Board should exercise its discretion to deny
`the petition pursuant to 35 U.S.C. § 314(a) based on the Samsung IPR.
`Prelim. Resp. 13–21; Paper 12. The Samsung IPR involves a challenge to
`claims 37–43, 45, 47, 48, 105–109, 115, and 116 of the ’183 patent.
`Samsung IPR, Paper 35, 2. Petitioner also challenges these claims, either in
`this proceeding or in other co-pending IPRs identified above. Because we
`deny institution on other grounds, as discussed below, we do not address this
`issue.
`
`D. The Asserted Combination of Caldwell ’205 and Ingraham ’735
`For its first ground submitted in support of its challenge, Petitioner
`asserts that claims 105, 106, 115, 116, 40, 45, 47, and 48 would have been
`obvious in light of the combination of Caldwell ’205 and Ingraham ’735.
`Pet. 12–67. Petitioner’s remaining grounds build upon that combination,
`and further rely on additional references added thereto. Id. at 67–79. The
`likelihood of prevailing on each of Petitioner’s grounds hinges on the merits
`of the asserted combination of Caldwell ’205 and Ingraham ’735.
`
`The merits of Petitioner’s contention that Caldwell ’205 and Ingraham
`’735 can be combined is identical in all relevant respects to co-pending case
`IPR2019-000356. Thus, for efficiency and consistency we incorporate the
`analysis in the Decision Denying Institution in that case. IPR2019-000356
`Decision Denying Institution.
`Based on the incorporated analysis, we are not persuaded that
`Petitioner has shown a reasonable likelihood that one of ordinary skill in the
`art would have combined Caldwell ’205 and Ingraham ’735 in the manner
`
`
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`IPR2019-00355
`Patent 5,796,183
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`asserted. Accordingly Petitioner has not shown a reasonable likelihood it
`would prevail in demonstrating that the subject matter of any of the
`challenged claims would have been obvious over any of the prior art
`combinations relied on.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
`12
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`IPR2019-00355
`Patent 5,796,183
`
`
`PETITIONER
`W. Karl Renner
`Jeremy Monaldo
`Daniel D. Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`dsmith@fr.com
`
`PATENT OWNER
`Joseph A. Rhoa
`Jonathan A. Roberts
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`jr@nixonvan.com
`
`
`
`13
`
`
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