`
`
`Byron Hourmand
`In re Patent of:
`5,796,183 Atty. Docket No.: 39521-0062IP1
`U.S. Patent No.:
`August 18, 1998
`
`Issue Date:
`Appl. Serial No.: 08/601,268
`
`Filing Date:
`January 31, 1996
`
`Title:
`CAPACITIVE RESPONSIVE ELECTRONIC SWITCHING
`CIRCUIT
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 5,796,183 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`SUMMARY OF THE ’183 PATENT ............................................................. 1
`A. Brief Description ....................................................................................... 1
`REQUIREMENTS FOR IPR .......................................................................... 2
`A. Grounds for Standing ................................................................................ 2
`B. Challenge and Relief Requested ............................................................... 2
`1. Discretion under 35 U.S.C. § 314(a) ............................................... 4
`C. Level of Ordinary Skill in the Art ............................................................. 6
`D. Claim Construction ................................................................................... 7
`1.
`“providing signal output frequencies” (claims 37, 40, 105) ........... 7
`2.
`“supply voltage” (claim 37) ............................................................ 8
`3.
`“coupled” (claims 37, 40, 105) ...................................................... 10
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 12
`A. [GROUND 1A] – Claims 105-106, 115-116, 40, 45, 47, and 48 are
`obvious over Caldwell and Ingraham ..................................................... 12
`1.
`Caldwell ......................................................................................... 12
`2.
`Ingraham ........................................................................................ 13
`3.
`Combination of Caldwell and Ingraham ....................................... 15
`4.
`Reasons to combine Caldwell and Ingraham ................................ 18
`B. [GROUND 1B] – Claims 107-109, and 41-43 are obvious over
`Caldwell, Ingraham, and Meadows ........................................................ 67
`1. Meadows ....................................................................................... 67
`2.
`Combination of Caldwell, Ingraham, and Meadows .................... 68
`3.
`Reasons to combine Caldwell, Ingraham, and Meadows ............. 70
`C. [GROUND 1C] – Claims 37-39 are obvious over Caldwell, Ingraham,
`and Leach ................................................................................................ 73
`1.
`Leach ............................................................................................. 73
`2.
`Combination of Caldwell, Leach, and Ingraham .......................... 73
`3.
`Reasons to combine Caldwell, Leach, and Ingraham ................... 75
`IV. FEES .............................................................................................................. 79
`V.
`CONCLUSION .............................................................................................. 80
`VI. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 80
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 80
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 80
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 80
`D. Service Information ................................................................................ 81
`
`i
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`
`
`
`APPLE-1001
`
`APPLE-1002
`
`EXHIBITS
`
`U.S. Patent No. 5,796,183 to Hourmand (“the ’183 patent”)
`
`Excerpts from the Prosecution History of the ’183 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Phillip Wright
`
`APPLE-1004
`
`U.S. Patent No. 5,572,205 to Caldwell (“Caldwell”)
`
`APPLE-1005
`
`U.S. Patent No. 4,561,002 to Chiu (“Chiu”)
`
`APPLE-1006
`
`Prosecution History of Reexamination Control No. 90/012,439
`
`APPLE-1007
`
`Prosecution History of Reexamination Control No. 90/013,106
`
`APPLE-1008
`
`U.S. Patent No. 4,560,954 to Leach (“Leach”)
`
`APPLE-1009
`
`U.S. Patent No. 4,878,107 to Hopper (“Hopper”)
`
`APPLE-1010
`
`U.S. Patent No. 5,341,036 to Wheeler (“Wheeler”)
`
`APPLE-1011
`
`U.S. Patent No. 4,237,421 to Waldron (“Waldron”)
`
`APPLE-1012
`
`U.S. Patent No. 5,650,597 to Redmayne (“Redmayne”)
`
`APPLE-1013
`
`U.S. Patent No. 4,922,061 to Meadows (“Meadows”)
`
`APPLE-1014
`
`U.S. Patent No. 4,418,333 to Schwarzbach (“Schwarzbach”)
`
`APPLE-1015
`
`U.S. Patent No. 4,293,734 to Pepper (“Pepper”)
`
`APPLE-1016
`
`U.S. Patent No. 4,731,548 to Ingraham (“Ingraham ’548”)
`
`APPLE-1017
`
`U.S. Patent No. 4,758,735 to Ingraham (“Ingraham”)
`
`ii
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`
`
`APPLE-1018
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`U.S. Patent No. 5,189,417 to Caldwell (“Caldwell ’417”)
`
`APPLE-1019
`
`U.S. Patent No. 4,308,443 to Tucker (“Tucker”)
`
`APPLE-1020
`
`U.S. Patent No. 4,290,061 to Serrano (“Serrano”)
`
`APPLE-1021
`
`U.S. Patent No. 4,845,630 to Stephens (“Stephens”)
`
`APPLE-1022
`
`U.S. Patent No. 5,048,019 to Albertsen (“Albertsen”)
`
`APPLE-1023
`
`U.S. Patent No. 5,632,039 to Walker (“Walker”)
`
`APPLE-1024
`
`U.S. Patent No. 5,508,653 to Chu (“Chu”)
`
`APPLE-1025
`
`U.S. Patent No. 5,087,825 to Ingraham (“Ingraham ’825”)
`
`APPLE-1026
`
`U.S. Patent No. 4,649,323 to Pearlman (“Pearlman”)
`
`APPLE-1027
`
`U.S. Patent No. 5,311,392 to Kinney (“Kinney”)
`
`APPLE-1028
`
`U.S. Patent No. 4,707,852 to Jahr (“Jahr”)
`
`APPLE-1029
`
`U.S. Patent No. 5,638,444 to Chou (“Chou”)
`
`APPLE-1030
`
`U.S. Patent No. 5,063,383 to Bobba (“Bobba”)
`
`APPLE-1031
`
`U.S. Patent No. 4,903,251 to Chapman (“Chapman”)
`
`iii
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`
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 37-43, 45, 47, 48, 105-109, 115, and 116 (“the Challenged
`
`Claims”) of U.S. Patent No. 5,796,183 (“the ’183 patent”).
`
`I.
`
`SUMMARY OF THE ’183 PATENT
`A. Brief Description
`The ’183 patent relates to a capacitive responsive electronic switching
`
`circuit. APPLE-1001, Abstract. As shown in Figure 4, the circuit includes
`
`oscillator 200 (shown in blue) providing a periodic output signal, input touch
`
`terminal 450 (green) for an operator to provide an input by proximity or touch, and
`
`touch circuit 400 (orange) that provides a detection signal to microcontroller 500
`
`(yellow) that receives the output signal from the oscillator. Id., FIG. 4, 7:22-24,
`
`12:6-28. APPLE-1003, [27]-[34] (“Technology Overview”).
`
`1
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
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`APPLE-1001, FIG. 4 (annotated)
`
`
`
`II. REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Apple certifies that the ’183 Patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint against Apple on November
`
`29, 2017 in the Eastern District of Michigan. Apple is not barred or estopped from
`
`requesting this review on the grounds identified below.
`
`B. Challenge and Relief Requested
`Apple requests IPR of the Challenged Claims on the following grounds:
`
`2
`
`
`
`Ground
`1A
`
`1B
`
`1C
`
`Claims
`105-106, 115-116,
`40, 45, 47, 48
`107-109, 41-43
`
`37-39
`
`
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`§ 103 Basis
`Obvious over Caldwell and Ingraham
`
`Obvious over Caldwell, Ingraham, and
`Meadows
`Obvious over Caldwell, Ingraham, and
`Leach
`
`The earliest priority date of the ’183 patent is January 31, 1996 (the “Critical
`
`Date”). APPLE-1002. The ’183 patent was subject to a previous IPR challenge
`
`filed by Samsung. Samsung v. UUSI, IPR2016-00908, Paper 2 (PTAB April 15,
`
`2016).
`
`The cited references are prior art as shown:
`
`Reference
`Caldwell (APPLE-1004)
`Leach (APPLE-1008)
`Meadows (APPLE-1013)
`Ingraham (APPLE-1017)
`
`
`35 U.S.C. §
`102(e)
`102(b)
`102(b)
`102(b)
`
`Qualifying Date
`03/29/1993 (filed)
`12/24/1985 (issued)
`05/01/1990 (issued)
`07/19/1988 (issued)
`
`Caldwell and Ingraham were listed in an IDS during prosecution of the ’183
`
`patent, but not relied on during that prosecution nor during subsequent Patent
`
`Owner-initiated reexamination. APPLE-1001, Face; APPLE-1002, 302, 307;
`
`APPLE-1006; APPLE-1007. The remaining references were not considered.
`
`Caldwell and Ingraham are the only references that were relied on by
`
`3
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`Samsung in the prior IPR of the ’183 patent. Samsung v. UUSI, Paper 2.
`
`However, this Petition relies on different disclosures from these references, and
`
`presents them in a different light.
`
`For example, this Petition relies on Caldwell as a primary reference, while
`
`the Samsung IPR used Caldwell merely “to corroborate that one skilled in the art
`
`would have had the knowledge and capability to implement” its proposed
`
`combination, and not to “disclose any of the features of the challenged claims.”
`
`Samsung v. UUSI, Paper 2, 45, note 13.
`
`The Samsung IPR relied on Ingraham throughout, but did not rely on it for
`
`the claim features to which it is mapped in this Petition. Section III, [105g]
`
`(relying on Ingraham for “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”).
`
`1.
`Discretion under 35 U.S.C. § 314(a)
`The Board has discretion “to deny a petition that challenges a patent that was
`
`previously challenged before the Board.” Shenzhen Silver Star Intelligent Tech. v.
`
`iRobot, IPR2018-00898, Paper 9, 6 (10/01/2018); Gen. Plastic Indus. v. Canon
`
`Kabushiki Kaisha, IPR2016-01360, Paper 19, 8 (09/06/2017). The Board has
`
`provided a non-exhaustive list of factors it considers when determining whether to
`
`apply this discretion. Gen. Plastic, Paper 19, 16. These factors weigh heavily
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`4
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`against denial because any delay in Apple’s IPR relative Samsung’s IPR was
`
`caused by Patent Owner’s delay in bringing suit against Apple. Patent Owner
`
`waited over two years and until after the Samsung IPR concluded before suing
`
`Apple. Under these circumstances, rewarding Patent Owner’s delay and denying
`
`this petition for discretionary reasons would be unfair to Apple.
`
`Specifically, the first General Plastic factor weighs against denial, because
`
`Apple has not filed any previous petition challenging the ’183 patent. Gen.
`
`Plastic, Paper 19, 16. The second factor also weighs against denial, because Apple
`
`did not know of any of the prior art references relied on in this Petition when
`
`Samsung filed its IPR and, because Apple had not been sued, had no reason to
`
`identify prior art applicable to the ’183 patent at that time. Gen. Plastic, Paper 19,
`
`16.
`
`The fourth General Plastic factor also weighs against denial, because the
`
`prior art relied on in this Petition was identified by prior art searching and review
`
`that was not conducted (and that Apple had no reason to conduct) until after suit
`
`was filed against Apple and the Samsung IPR had concluded. Gen. Plastic, Paper
`
`19, 16.
`
`In addition, the fifth General Plastic factor weighs against denial, because
`
`any delay between Samsung’s IPR and this IPR was due to Patent Owner’s delay
`
`in filing suit against Apple. Gen. Plastic, Paper 19, 16.
`
`5
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`The sixth and seventh factors either favor institution or are at worst neutral.
`
`Gen. Plastic, Paper 19, 16.
`
`Further, in Shenzhen, the Board considered “the extent to which the
`
`petitioner and any prior petitioner(s) were similarly situated defendants.”
`
`Shenzhen, Paper 9, 7. The “purpose” of this factor “is to discourage tactical filing
`
`of petitions over time by parties that faced the same threat at the same time.” Id.,
`
`14.1 Here, Apple did not face “the same threat at the same time” as Samsung
`
`because Patent Owner waited to sue Apple over two years after it filed suit against
`
`Samsung and over a month after the Samsung IPR concluded.
`
`Because these factors weigh against denial, the Board should not exercise its
`
`discretion to deny institution.
`
`C. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art as of the Critical Date of the ’183 patent
`
`(hereinafter a “POSITA”) 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. APPLE-1003, [22]; APPLE-
`
`1001, (Background).
`
`
`1 All emphasis added unless otherwise indicated.
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`6
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
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`D. Claim Construction
`Petitioner proposes construction of the terms below. The remaining terms
`
`do not require construction. Vivid Techs. v. Am. Sci. & Eng’g, 200 F.3d 795, 803
`
`(Fed. Cir. 1999)(only claim terms in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy). Petitioner reserves the right to
`
`respond to any constructions offered by Patent Owner or adopted by the Board.
`
`Petitioner is not waiving any arguments concerning indefiniteness or claim scope
`
`that may be raised in litigation.
`
`1.
`
`“providing signal output frequencies” (claims 37, 40,
`105)
`Claim 40 recites “the microcontroller selectively providing signal output
`
`frequencies to a plurality of small sized input touch terminals of a keypad.” Claim
`
`45, which depends from 40, states that “each signal output frequency selectively
`
`provided to each row of the plurality of small sized input touch terminals of the
`
`keypad has a same hertz value.” Because it is a dependent claim, claim 45 further
`
`limits the claim from which it depends and independent claim 40 must be
`
`interpreted to encompass the scope of claim 45. Thus, the limitation “providing
`
`signal output frequencies” in claim 40 must be interpreted to encompass the
`
`situation where “each signal output frequency” of the provided signal output
`
`frequencies “has the same hertz value.” 37 C.F.R. 1.75(c).
`
`In addition, a POSITA would have understood that two frequencies that
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`7
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`have “the same hertz value” are the same frequency. APPLE-1003, [59]. Thus,
`
`the claimed “signal output frequencies” can be the same, and need not be different
`
`frequencies. Id.
`
`Similarly, claim 41 which depends from claim 40, states that “each signal
`
`output frequency selectively provided to each row of the plurality of small sized
`
`input touch terminals of the keypad is selected from a plurality of hertz values.”
`
`Thus, “providing signal output frequencies” in claim 40 must also be interpreted to
`
`encompass selection of each frequency from a plurality of hertz values.
`
`As claims 41 and 45 confirm, the limitation “providing signal output
`
`frequencies” in claim 40 should be construed to include “providing signal output
`
`frequencies, wherein each signal output frequency has a same hertz value or is
`
`selected from a plurality of hertz values.” APPLE-1003, [58]-[61].
`
`Claims 37 and 105 also recite “providing signal output frequencies.”
`
`Because there is no indication that this identical claim language should have a
`
`different meaning, “providing signal output frequencies” in claims 37 and 105
`
`should be construed consistent with the identical language in claim 40. Pods, Inc.
`
`v. Porta Stor, Inc., 484 F. 3d 1359 (Fed. Cir. 2007); APPLE-1003, [62].
`
`2.
` “supply voltage” (claim 37)
`Claim 37 recites “wherein an oscillator voltage is greater than a supply
`
`voltage.” The recitation of “a supply voltage” is properly construed to be a supply
`
`8
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`voltage of the oscillator, as opposed to a supply voltage for another component in
`
`the touch circuit.
`
`The placement of the term within a wherein clause describing the oscillator
`
`supports this interpretation. APPLE-1001, claim 37. In addition, the supply
`
`voltage being compared to the “oscillator voltage” in claim 37 is indicative that the
`
`recited supply voltage is a supply voltage of the oscillator. APPLE-1003, [63]-
`
`[64].
`
`The specification supports this interpretation, describing an oscillator that “is
`
`powered by 5 V [volt] regulator” (a supply voltage) and “buffer circuit 230
`
`powered by 26V regulator 130 … for … boosting its peak from 5 V to 26V.”
`
`APPLE-1001, 13:34-39. Because the 26 volt oscillator output is greater than the 5
`
`volt supply, this disclosure supports interpreting the supply voltage in claim 37 as a
`
`supply voltage of the oscillator. Id.; APPLE-1003, [65].
`
`Further, in the previous IPR, the Board determined: “based on the context of
`
`the supply voltage limitation in [claim 37], that one of ordinary skill in the art
`
`would understand the term ‘oscillator voltage’ as referring to the ‘periodic output
`
`signal’ and the term ‘supply voltage’ as referring to a supply voltage of the
`
`oscillator.” Samsung v. UUSI, IPR2016-00908, Paper 12, 9 (10/19/2016). The
`
`Board found that “[s]uch an understanding is consistent with the Specification,
`
`which discloses voltage regulator 100 provides supply voltages 104, 105, and 106
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`9
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
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`to oscillator 200.” Id.
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`Accordingly, “a supply voltage” in claim 37 should be construed to mean “a
`
`supply voltage of the oscillator.” APPLE-1003, [63]-[67].
`
`3.
`“coupled” (claims 37, 40, 105)
`Claims 37, 40, and 105 recite various components “coupled” to other
`
`components. For example, claim 37 recites “a detector circuit coupled to said
`
`oscillator.” The ’183 patent discloses that such coupling may be direct (e.g., two
`
`components connected by a wire) or indirect (e.g., two components connected by a
`
`path through multiple other components).
`
`For example, the ’183 patent describes that “[o]scillator 1200 is preferably
`
`comprised of a first invertor gate 1210 having [its] input coupled to [its] output via
`
`resistors 1214 and 1216[.]” APPLE-1001, 20:6-8. FIG. 13 shows this
`
`configuration:
`
`10
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
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`
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`APPLE-1001, FIG. 13 (annotated)
`
`The ’183 patent includes several other examples of indirect coupling
`
`between components. APPLE-1001, 12:60-62, 13:46-48.
`
`Accordingly, the term “coupled” should be construed to include indirect
`
`coupling via intervening components. APPLE-1003, [68]-[71].
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`11
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`[GROUND 1A] – Claims 105-106, 115-116, 40, 45, 47, and
`48 are obvious over Caldwell and Ingraham
`1.
`Caldwell
`Caldwell teaches a “touch control system that is responsive to a user input
`
`selection” that “includes an electrically non-conducting substrate, such as glass
`
`ceramic, and at least one capacitive-responsive touchpad on the substrate.”
`
`APPLE-1004, Abstract. Caldwell’s “high frequency line driver 32” (an oscillator)
`
`produces a “source signal having a primary frequency that is greater than 150 kHz
`
`… [and] applied to one portion of the touchpad.” Id. “The touchpad couples the
`
`electrical signal to another portion of the touchpad in order to develop a detection
`
`signal, which is decoded in order to determine the presence of the capacitance of a
`
`user.” Id.
`
`In Caldwell, “[e]ach touch pad 14 includes a first portion composed of an
`
`electrically conducting element 16a” (a first electrode) “and a second portion
`
`composed of an electrically conducting element 16b” (a second electrode) “affixed
`
`to a surface 18 of substrate 12” and “a user contact pad 20” (a third electrode)
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`“overlying the conductive elements 16a and 16b.” Id., 3:60-66. FIG. 2 shows
`
`example touch pad 14. APPLE-1003, [72]-[73].
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`12
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`APPLE-1004, FIG. 2 (annotated)
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`
`
`2.
`Ingraham
`Ingraham is emblematic of well-known prior art touch sensors described in
`
`the “Background” of the ’183, which cites “U.S. Pat. No. 4,758,735” (Ingraham) as
`
`disclosing “capacitive touch switches” that rely “on the change in capacitive
`
`coupling between a touch terminal and ground” in which “the operator need not
`
`come in conductive contact with the touch terminal but rather only in close
`
`proximity to it” for detection to occur. APPLE-1001, 3:44-63. The ’183 patent
`
`13
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
`states that the “specific touch detection method” it describes “has similarities to the
`
`devices of” Ingraham. APPLE-1001, 5:43-44.
`
`In particular, Ingraham’s “touch controlled electrical switching circuit”
`
`includes an “oscillator circuit” producing a “square wave” detection signal.
`
`APPLE-1017, 2:21-25. A “touch plate 15 ... made of an electrically conductive
`
`material” (i.e., an electrode) is “electrically coupled” to the path of the detection
`
`signal. Id., 2:9-15. The “oscillator ... applies” the detection “signal to [the] touch
`
`plate [15].” Id., 1:42-44. When “a person touches plate 15,” the voltage of the
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`detection signal is decreased by the introduction of the person’s “body
`
`capacitance” to ground. Id., 2:56-58. This decrease in voltage is measured by a
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`“detector circuit” coupled to touch plate 15 to detect a touch input. APPLE-1017,
`
`1:42-44, claim 8, FIG. 1; APPLE-1003, [74]-[76]. FIG. 1 from Ingraham shows
`
`touch plate 15 being touched by a person, thereby introducing body capacitance to
`
`ground (11, 14):
`
`14
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
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`APPLE-1017, FIG. 1 (annotated)
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`
`
`In Ingraham, “it is not necessary for the operator to actually touch the
`
`electrically conductive plate 15 but only come sufficiently close to add the body
`
`capacitance 14” to the circuit to detect a touch input. Id., 2:15-18.
`
`3.
`Combination of Caldwell and Ingraham
`In the combination, Ingraham’s touch plate 15 replaces each touch pad 14 of
`
`Caldwell including “conductive elements 16a and 16b” and “user contact pad 20.”
`
`APPLE-1004, 3:60-66, FIG. 2; APPLE-1017, 2:9-15, 2:56-58, FIG. 1; APPLE-
`
`1003, [77]. Caldwell’s FIG. 5 shows this configuration:
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`15
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`Attorney Docket No. 39521-0062IP1
`IPR of U.S. Patent No. 5,796,183
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`APPLE-1004, FIG. 5 (annotated)
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`As shown, Ingraham’s touch plate 15 is connected to Caldwell’s drive lines
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`52a-52c and receives the detection signal from high frequency line driver 46.
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`APPLE-1003, [78]. Touch plate 15 also connects through sense lines 54a-54d to
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`Caldwell’s detector circuit. Id.
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`In Ingraham, introduction of a user’s body capacitance to ground at one of
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`the touch plates lowers the voltage of the signal provided to the detector circuit.
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`APPLE-1017, 2:56-58. Thus, the impact on the signal coming out of Caldwell’s
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`touch pad 14 when it is touched (i.e., Caldwell’s oscillator signal with a lowered
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`voltage) is the same as the impact on the signal coming out of Ingraham’s touch
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`plate 15 when it is touched (i.e., Ingraham’s oscillator signal with a lowered
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`voltage). APPLE-1004, 2:21-25, 2:65-66, 4:65-5:2; APPLE-1017, 2:56-58.
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`Accordingly, introduction of a user’s body capacitance to ground at one of
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`Ingraham’s touch plates 15 lowers the voltage of the signal provided from
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`Caldwell’s high frequency line driver 46 to that touch plate. Id.
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`Because the impact on the signal is the same with the substitution of
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`Ingraham’s touch plates 15, Caldwell’s detector circuit detects this decrease in
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`voltage in the same way it detects the decrease in voltage caused by a user
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`touching Caldwell’s touch pad 14. APPLE-1004, 2:21-25. A POSITA would have
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`understood that a user touching one of Ingraham’s touch plates 15 may decrease
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`the voltage of the detection signal by a different amount than the user touching one
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`of Caldwell’s touch pads 14. As Dr. Wright explains, a POSITA would have been
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`readily able to address this potential difference by recalibrating the threshold
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`voltage of Caldwell’s detector circuit. APPLE-1003, [79]-[80]; APPLE-1001
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`(Background section), 4:8-10 (known to “adjust the detection sensitivity by
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`17
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`adjusting the threshold voltage to which the sensed voltage is compared”). Such a
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`recalibration would have been routine for a POSITA to implement, and thus would
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`not serve as a technical impediment to the combination or lead a POSITA away
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`from the combination. Id.
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`Accordingly, the combination involves a simple substitution of one type of
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`known touch pad (Caldwell’s touch pad 14) with another (Ingraham’s touch plate
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`15). In the combination, a POSITA would have known (1) to substitute each touch
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`pad 14 of Caldwell with a touch plate 15 of Ingraham, (2) to apply Caldwell’s high
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`frequency line driver 46 to the touch plates 15, and (3) to adjust the threshold used
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`in Caldwell’s detector circuit as needed. Caldwell’s detector circuit would then
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`operate as described in Caldwell to detect proximity or touch at touch plates 15.
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`APPLE-1003, [81].
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`4.
`Reasons to combine Caldwell and Ingraham
`A POSITA would have been motivated to substitute Ingraham’s touch plates
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`for Caldwell’s touch pads to obtain several advantages of Ingraham’s touch sensor
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`configuration. For example, a POSITA would have understood that incorporating
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`Ingraham’s touch plate would have provided improved proximity detection (for
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`example, proximity detection at a greater effective range, and at a higher signal-
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`noise ratio) compared to Caldwell alone. APPLE-1003, [82]. Indeed, the ’183
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`patent itself recognizes that Ingraham has the advantage that an “operator need not
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`come in conductive contact with the touch terminal but rather only in close
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`proximity to it.” APPLE-1001, 3:56-59 (a “major advantage” of Ingraham);
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`APPLE-1017, 2:15-20, 2:48-52. A POSITA would have recognized that this
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`advantage would have made Caldwell’s keypad more responsive to user input,
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`thereby making it easier for an operator to use under a variety of conditions.
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`APPLE-1003, [82].
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`In addition, Ingraham’s touch plate requires fewer electrodes than
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`Caldwell’s. Compare APPLE-1017, 2:11-15, FIG. 1 (a single electrically-
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`conductive “touch plate 15”) to APPLE-1004, 3:64-66, FIG. 4 (two “conductive
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`elements 16a and 16b” and a “user contact pad 20”); APPLE-1017, 3:55-58;
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`APPLE-1015, 8:55-56; APPLE-1009, 3:9-23. This simplification of the touch pad
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`circuit would have led to a reduction in the manufacturing cost of the touch circuit
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`(two electrodes are eliminated from each touch pad), which also would have
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`motivated a POSITA to perform the modification. Id.; APPLE-1003, [83].
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`Although the ’183 patent describes potential issues related to using multiple
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`touch pads of the type described in Ingraham “placed in close proximity” to one
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`another, such as susceptibility to the effects of contaminants on the surface of the
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`touch pads, the techniques of Caldwell address this issue. APPLE-1001, 4:18-27;
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`APPLE-1004, 5:15-18. Specifically, using oscillator “frequencies of 150 kHz and
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`above” in Caldwell’s touch circuit provides “increased immunity to cross-coupling
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`19
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`between adjacent” touch pads “due to liquids, such as water, on substrate 12.”
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`APPLE-1004, 5:15-18; APPLE-1001, 5:49-53 (describing an approach similar to
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`Caldwell’s for “minimiz[ing] the effects of surface contamination”); APPLE-1003,
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`[84]. As Dr. Wright explains, a POSITA would have seen Ingraham’s touch plates
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`15 as suitable for operation at the frequencies and voltage levels used in Caldwell’s
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`touch circuit, and a POSITA would have retained these frequencies and voltage
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`levels in the combination to retain Caldwell’s benefits of improved contaminant
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`performance. Id.2
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`The results of the combination would have been predictable because sensors
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`detecting a user’s body capacitance to ground (e.g., Ingraham’s sensors) were
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`widely used in touch sensing circuits like Caldwell’s. APPLE-1003, [85]; APPLE-
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`1017, 2:15-20, 3:55-58; APPLE-1001, 3:44-59; APPLE-1025, 3:30-37, FIG. 1;
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`APPLE-1016, 2:33-42, FIG. 1. Indeed, the ’183 patent describes several such
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`touch sensing circuits in its “Background” section, including Ingraham’s touch
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`circuit. APPLE-1001, 3:44-63. As recognized in the ’183 patent’s “Background”
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`2 The ’183 patent describes Ingraham’s circuit as operating at a higher
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`voltage. APPLE-1001, 6:8-13. However, Ingraham does not describe a particular
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`supply or peak voltage for its circuit, and its touch plate 15 would have been
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`responsive to Caldwell’s voltage levels. APPLE-1017; APPLE-1003, [84].
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`section, Ingraham’s technique is one of a limited number of known
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`“methodologies” for achieving “capacitive touch switches.” APPLE-1001, 3:12-
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`63. With this background, and in addition to the motivations discussed above, a
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`POSITA would have seen Ingraham’s touch plates 15 as being obvious to try in
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`Caldwell and representing a simple substitution of one known element (Caldwell’s
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`touch pads 14) for another (Ingraham’s touch plates 15) to obtain predictable
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`results. APPLE-1003, [85].
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`Finally, a POSITA would have understood that Caldwell’s touch circuit
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`would continue to function in substantially the same fashion with Ingraham’s touch
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`plate 15 substituted for touch pads 14. APPLE-1003, [86]. Any recalibration of
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`Caldwell’s detector circuit to compensate for differences in signal change between
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`Ingraham’s touch plate 15 and Caldwell’s touch pads 14 would have been routine
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`and predictable for a POSITA to implement. APPLE-1001 (Background section),
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`4:8-10. Thus, a POSITA would have had ample reasons to combine Ingraham with
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`Caldwell in the manner proposed and would have had a reasonable expectation of
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`success. APPLE-1003, [86].
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`[105pre] – “A capacitive responsive electronic switching circuit for a
`controlled keypad device comprising”
`Caldwell teaches a “touch control system that is responsive to a user input
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`selection” that “includes an electrically non-conducting substrate … and at least
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`one capacitive-responsive touchpad on the substrate.” APPLE-1004, Abstract.
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`Caldwell’s “source signal … is applied to one portion of the touchpad.” Id. “The
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`touchpad couples the electrical signal to another portion of the touchpad in order to
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`develop a detection signal, which is decoded” by a detector circuit “in order to
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`determine the presence of the capacitance of a user.” Id. Caldwell’s
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`“microcomputer” determines “a touched or non-touched condition for the
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`associated touch pads 14a-14n,” and produces electrical output signals in response
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`to touched conditions. Id., 7:37-40, 7:47-53. Caldwell’s “touch control system” is
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`a “capacitive responsive electronic switching circuit” because it selectively
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`produces electrical output signals responsive to “presence of the capacitance of a
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`user” at the touch pads. Id., Abstract, 7:37-53, FIGS. 4, 5; APPLE-1003, [87].
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`The touch pads are arranged into a “keypad 15 composed of multiple touch pads
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`14.” APPLE-1004, 6:5-9.
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`Caldwell describes the touch circuit in the context of “modulated glass
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`ceramic cook tops,” but also discloses that “its principles may be used in other
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`applications … especially where it is desired to enjoy immunity from the splashing
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`of water and the like.” APPLE-1004, 8:30-42; 3:14-3