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 IPR2019-00356
`Patent 5,796,183
`_____________
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, 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 IPR2019-00356
`Patent 5,796,183
`_____________
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2019-00356
`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 28, 32, 36, 83–88, and 90–93 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
`has been to make use of the capacitance of the human operator.” Id. at 3:12–
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`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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`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
`pad such that the operator’s finger must entirely overlap a touch terminal.
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`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 27, reproduced below, was cancelled in ex parte
`reexamination. Ex. 1007, 51.1 Nonetheless, because claims 28, 32, and 36,
`which depend from claim 27, are challenged, we consider claim 27 as part of
`those claims.
`27. A capacitive responsive electronic switching circuit for a
`controlled keypad device comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`
`
`1 Citations to Exhibits 1006 and 1007, which are the file histories for
`reexamination requests 90/012,439 and 90/013,106, refer to consecutive
`page numbers applied to the exhibits.
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`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;
`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. 1006, 2. Challenged independent claim 83, and by dependency claims
`84–88 and 90–93, repeat the language of claim 27 and add to the
`microcontroller limitation the additional requirement “wherein a peak
`voltage of the signal output frequencies is greater than a supply voltage.”
`Ex. 1007, 27.
`
`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.
`
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` U.S. Patent No. 5,650,597 (“Redmayne ’597”), filed January
`20, 1995, issued July 22, 1997. Ex. 1012.
` U.S. Patent No. 4,922,061 (“Meadows ’061”), filed July 20,
`1989, issued May 1, 1990. Ex. 1013.
` U.S. Patent No. 4,418,333 (“Schwarzbach ’333”), filed June 8,
`1981, issued November 29, 1983. Ex. 1014.
` U.S. Patent No. 4,731,548 (“Ingraham ’548”), filed September
`29, 1986, issued March 15, 1988. Ex. 1016.
` U.S. Patent No. 4,308,443 (“Tucker ’443”), filed May 1, 1979,
`issued December 29, 1981. Ex. 1019.
`Petitioner also relies on the Declaration of Dr. Phillip Wright. Ex. 1003.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 28, 32, 36, 83–88, and 90–93 on the
`following grounds of unpatentability (Pet. 3):
`
`Claim(s)
`32, 36
`28
`
`83–85, 93
`
`90
`
`Reference(s)
`Caldwell ’205 and Ingraham ’735
`Caldwell ’205, Ingraham ’735, and Tucker
`’443
`Caldwell ’205, Ingraham ’735, and
`Redmayne ’597
`Caldwell ’205, Ingraham ’735, Redmayne
`’597, and Schwarzbach ’333
`
`Basis
`§ 103(a)2
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`
`2 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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`91
`
`86–88
`
`92
`
`Caldwell ’205, Ingraham ’735, Redmayne
`’597, and Ingraham ’548
`Caldwell ’205, Ingraham ’735, Redmayne
`’597, and Meadows ’061
`Caldwell ’205, Ingraham ’735, Redmayne
`’597, and Tucker ’443
`
`§ 103(a)
`
`§ 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.
`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
`
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`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. 17; Paper 12, 1; Ex. 2001 ¶ 13.
`Petitioner has also concurrently filed five other Petitions challenging
`claims of the ’183 patent under various grounds: IPR2019-00355, 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
`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).
`
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`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).3 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)
`(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) (“[T]he 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.”).
`
`
`3 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).
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`Petitioner proposes construction of three claim terms: “providing
`signal output frequencies,” required by claims 27 and 83; “supply voltage,”
`required by claim 83; and “coupled,” required by claims 27 and 83. Pet. 7–
`11. Patent Owner maintains Petitioner has incorrectly construed “providing
`signal output frequencies,” and proposes a different construction for that
`phrase.4 Prelim. Resp. 25–29.
`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).
`
`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. 16–24; Paper 12. The Samsung IPR involves a challenge to
`claims 37–41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99,
`101, and 102 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.
`
`
`4 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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`D. The Asserted Combination of Caldwell ’205 and Ingraham ’735
`For its first ground submitted in support of its challenge, Petitioner
`asserts that claims 32 and 36 would have been obvious in light of the
`combination of Caldwell ’205 and Ingraham ’735. Pet. 12–55. Petitioner’s
`remaining grounds build upon that combination, and further rely on
`additional references added thereto. Id. at 56–79. The likelihood of
`prevailing on each of Petitioner’s grounds hinges on the merits of the
`asserted combination of Caldwell ’205 and Ingraham ’735.
`Caldwell ’205, a U.S. patent titled “Touch Control System,” was
`applied for March 29, 1993, and therefore we treat this reference as prior art
`under 35 U.S.C. § 102(e) for purposes of this Decision. Ex. 1004, [22], [54].
`Figures 1 and 2 of Caldwell ’205 are reproduced below, with portions of
`Figure 2 highlighted.
`
`
`
`Figure 1 depicts control touch pads 14 on a glass substrate 12 of a “smooth-
`top cooking surface for a 4-burner cooking appliance.” Id. at 3:56–4:10.
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`Figure 2 depicts details of touch pads 14 (one of which is highlighted),
`including metallic contact pads 20, each separated from two closely-spaced
`electrically conducting elements 16a and 16b by the glass substrate. Id.
`This arrangement results in a capacitive coupling between the conducting
`elements 16a and 16b that is altered when contact pad 20 is touched. Id. at
`4:55–5:2.
`Figure 4 of Caldwell ’205 is reproduced below.
`
`
`Figure 4 depicts a high frequency square wave signal applied to element 16a
`from High Frequency Line Driver 32, which signal is capacitively coupled
`to element 16b, and attenuated when pad 20 is touched. Id. This attenuation
`is sensed via connection 36 by Peak Detector 38, which in turn drives
`Amplitude Response Switch 42 via connection 40 to provide control output
`signals 44. Id. at 5:9–13. The applied frequency is specified to be greater
`than 150 kHz and preferably in the range of between 150 kHz and 500 kHz.
`Id. at 2:26–30. This frequency range is specified “based upon the discovery
`that touch controls operated at such primary frequencies have improved
`
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`water immunity performance,” thus avoiding inadvertent switching due to
`water spills on the surface, as opposed to an intentional touch. Id. at 2:32–
`35, 3:13–17, 8:9–11.
`Figure 5 of Caldwell ’205 is reproduced below.
`
`
`Figure 5 depicts an embodiment including a matrix array of touch pads 14a–
`14n, each of which operates as described above, and microcomputer 50,
`which controls demultiplexer 48 to selectively apply the 250 kHz signal to
`successive rows of the touch pad array, and in a coordinated fashion controls
`multiplexer 56 to successively interrogate the columns of the array. Id. at
`6:3–32. The remaining circuitry detects a touch to one of the pads in the
`manner described above, and the microcontroller determines which pad is
`being touched based on the particular row-column combination
`synchronized with the touch. Id. at 6:3–10, 7:37–48.
`
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`Ingraham ’735, a U.S. patent titled “DC Touch Control Switch
`Circuit,” issued July 19, 1988, and therefore we treat this reference as prior
`art under 35 U.S.C. § 102(a) for purposes of this Decision. Ex. 1017, [45],
`[54]. Figure 1 of Ingraham ’735 is reproduced below.
`
`
`
`Figure 1 depicts a touch control circuit in which capacitor 12 is
`coupled in series to body capacitance 14 when touch plate 15 is touched. Id.
`at 2:4–11. This causes transistor 22 to conduct a 1 kHz square wave signal
`from oscillator 30 to RC circuit 26 and 28, which, in turn, triggers Schmitt
`Trigger 60 to provide a control input to switch circuit 72. Id. at 2:21–24,
`2:48–62, 3:1–10, 3:32–33.
`The touch circuit depicted in Figure 1 of Ingraham ’735 is similar to
`that depicted in Figure 8 of the ’183 patent, described above, except the ’183
`patent uses high frequencies. See Ex. 1001, 5:43–44, 8:11–14 (“The specific
`touch detection method of the present invention has similarities to the
`devices of U.S. Pat. No. 4,758,735 . . . . A move to high frequency operation
`(>50 to 800 kHz) is not a benign choice relative to the lower frequency (60
`to 1000 Hz) operation seen in existing art such as U.S. Pat. No. 4,758,735 . .
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`. .”). In particular, unlike the touch pads of Caldwell ’205, “it is not
`necessary for the operator to actually touch the electrically conductive plate
`15 but only come sufficiently close to [trigger a control output].” Ex. 1017,
`2:15–18.
`Petitioner submits that one of ordinary skill would have combined
`Caldwell ’205 and Ingraham ’735 by replacing control touch pads 14 of
`Caldwell ’205 with touch plate 15 of Ingraham ’735 as depicted below in
`Petitioner’s annotated version of Figure 5 of Caldwell ’205.
`
`
`Pet. 16. As shown, touch plate 15 of Ingraham ’735 is placed at each
`position 14a–14n in the array of the touch control circuit of Caldwell ’205.
`Id. Petitioner’s declarant asserts that
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`the impact on the signal coming out of the Caldwell’s touch pad
`14 when it is touched . . . is the same as the impact on the signal
`coming out of Ingraham ’735’s touch plate 15 when it is
`touched . . . .
`Because the impact on the signal is the same with the
`substitution of Ingraham ’735’s touch plates 15, the detector
`circuit of Caldwell detects this decrease in voltage in the same
`way it detects the decrease in voltage caused by a user touching
`the user contact pad of Caldwell’s touch pad 14 . . . . In this
`regard, a POSITA would have understood that a user touching
`one of Ingraham ’735’s touch plates 15 may decrease the
`voltage of the detection signal by a different amount than the
`user touching one of Caldwell’s touch pads 14. A POSITA
`would have been readily able to address this potential
`difference by recalibrating the threshold voltage of Caldwell’s
`detector circuit . . . . Such a recalibration would have been
`routine for a POSITA to implement, and thus would not serve
`as a technical impediment to the combination or lead a POSITA
`away from the combination.
`Ex. 1003 ¶¶ 77–78.
`Petitioner relies on this specific combination of Caldwell ’205 and
`Ingraham ’735, and only this specific combination, for all grounds set forth
`in the Petition, adding additional features, but not altering this basic
`combination, for the grounds that rely on additional references. Pet. 15–18,
`57–58 (adding the timing constraints of Tucker ’443), 61–62 (adding the
`voltage supply of Redmayne ’597), 69 (adding the battery of Schwarzbach
`’333), 71–72 (adding the voltage regulator of Ingraham ’548), 74–76
`(adding the random frequency generation of Meadows ’061).
`Patent Owner argues, inter alia, that replacing the control touch pads
`of Caldwell ’205 with touch plate 15 of Ingraham ’735 would result in a
`combination that would not work. Prelim. Resp. 45–49. “If references
`taken in combination would produce a ‘seemingly inoperative device,’ . . .
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`such references teach away from the combination and thus cannot serve as
`predicates for a prima facie case of obviousness.” McGinley v. Franklin
`Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (citing In re Sponnoble,
`405 F.2d 578, 587 (1969)); see also In re Gordon, 733 F.2d 900, 902 (Fed.
`Cir. 1984) (finding no suggestion to modify a prior art device where the
`modification would render the device inoperable for its intended purpose);
`Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir.
`1999); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir.
`2007) (“[A] reference teaches away from a combination when using it in that
`combination would produce an inoperative result.”).
`Patent Owner submits the testimony of its declarant, Dr. Darran
`Cairns, that the detection circuit of Caldwell ’205 requires the touch pads,
`made up of the spaced-apart electrodes 16a and 16b as depicted in Figure 4
`above, to form a touch-sensitive capacitive coupling between drive lines 52
`and sense lines 54 as depicted in Figure 5 above. Ex. 2002 ¶ 75. But the
`touch plate of Ingraham ’735 has a single electrode, and if substituted for the
`touch pad of Caldwell ’205 would simply connect all of the drive lines and
`sense lines together, completely disabling the functionality of the circuit.
`Ex. 2002 ¶¶ 78–79. Moreover, the sensing circuitry required for the touch
`plate of Ingraham ’735 is completely different from that of Caldwell ’205 —
`and any attempted substitution would require redesign well beyond merely
`“recalibrating the threshold voltage,” as Petitioner’s declarant would have it.
`Ex. 2002 ¶¶ 76–77.
`Because of the conflicting testimony by the parties’ declarants, we
`view this evidence in the light most favorable to Petitioner solely for
`purposes of deciding whether to institute an inter partes review. 37 C.F.R.
`
`
`
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`§ 42.108(c). Nevertheless, our statutory mandate precludes trial institution
`where, as here, the information presented in a petition, when viewed in light
`of information presented in a preliminary response, fails to make out the
`threshold showing for review. See 35 U.S.C. § 314(a) (authorizing review
`only upon a showing of “a reasonable likelihood that the petitioner would
`prevail with respect to at least 1” challenged claim).
`As Patent Owner and Dr. Cairns explain, between Caldwell ’205 and
`Ingraham ’735, there exist material differences in the design and the
`operation of the driver and detection circuits and how the touch pad or the
`touch plate is coupled to the driver and detection circuits. See Prelim. Resp.
`45–49; Ex. 2002 ¶¶ 75–79. Patent Owner asserts that, in the face of these
`differences, Petitioner does not explain how the driver and detection circuits
`of Caldwell ’205 would work with Ingraham’s touch plate 15. Prelim. Resp.
`45–49; Ex. 2002 ¶¶ 75–79.
`According to Petitioner, in the proposed combination, Ingraham’s
`touch plate 15 is connected to drive lines 52a–52c of Caldwell ’205 and
`receives the detection signal from high frequency line driver 46. Pet. 16.
`Touch plate 15 also connects through sense lines 54a–54d to the detector
`circuit of Caldwell ’205. Id. at 16–17. Although Petitioner asserts that “the
`impact on the signal coming out of the Caldwell’s touch pad 14 when it is
`touched . . . is the same as the impact on the signal coming out of
`Ingraham’s touch plate 15 when it is touched” (id. at 17; Ex. 1003 ¶ 77),
`neither Petitioner nor Dr. Wright explains adequately how Ingraham’s touch
`plate 15 may be combined with the driver and detection circuits of Caldwell
`’205. Nor do they explain adequately how the driver and detection circuits
`of Ingraham ’735, or any portions of them, may be combined with the driver
`
`
`
`19
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`IPR2019-00356
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`
`and detection circuits of Caldwell ’205 to operate Ingraham’s touch plate 15
`in the proposed combination. Upon review of the record, even viewing the
`evidence in the “light most favorable” to Petitioner, Petitioner has not
`explained adequately how to form a touch-sensitive coupling between drive
`lines 52 and sense lines 54 of Caldwell ’205 using touch plate 15 of
`Ingraham ’735 in the proposed combination. Even when viewing evidence
`in the light most favorable to Petitioner, testimony without meaningful
`explanation and evidentiary support is entitled to little weight. See 37
`C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying
`facts or data on which the opinion is based is entitled to little or no
`weight.”). Thus, with that understanding, and for the reasons further
`discussed below, we agree with Patent Owner’s declarant’s analysis.
`We are mindful that, in general, “[t]he test for obviousness is not
`whether the features of a secondary reference may be bodily incorporated
`into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425
`(CCPA 1981). Instead, the relevant issue is “what the combined teachings
`of the references would have suggested to those of ordinary skill in the art.”
`Id. “Combining the teachings of references does not involve an ability to
`combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
`1973). However, Petitioner’s position is solely premised on its specific
`proposed combination of touch plate 15 of Ingraham ’735 with the control
`circuitry of Caldwell ’205. Therefore, this authority does not alter our
`conclusion in this case.
`In sum, we agree with Patent Owner that Petitioner has not explained
`adequately how a skilled artisan would have made the proposed combination
`of Caldwell ’205 and Ingraham ’735. Further, as discussed above, we agree
`
`
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`
`with Patent Owner that Petitioner has not explained adequately how the
`proposed combination is supposed to work. Cf. Pers. Web Techs., LLC v.
`Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (“[T]he Board nowhere
`clearly explained, or cited evidence showing, how the combination of the
`two references was supposed to work. At least in this case, such a clear,
`evidence-supported account of the contemplated workings of the
`combination is a prerequisite to adequately explaining and supporting a
`conclusion that a relevant skilled artisan would have been motivated to make
`the combination and reasonably expect success in doing so.” (Emphases
`added). According to the Federal Circuit,
`
`The amount of explanation needed to meet the governing
`legal standards—to enable judicial review and to avoid judicial
`displacement of agency authority—necessarily depends on
`context. A brief explanation may do all that is needed if, for
`example, the technology is simple and familiar and the prior art
`is clear in its language and easily understood. On the other hand,
`complexity or obscurity of
`the
`technology or prior-art
`descriptions may well make more detailed explanations
`necessary.
`Id. (internal citation omitted). We find that this case falls into the latter
`category. Given the level of ordinary skill in the art as well as the
`complexity of the design and operation of the driver and detector circuits in
`Caldwell ’205 and Ingraham ’735, it was incumbent on Petitioner to explain
`how Ingraham’s touch plate 15 would have been combined with the driver
`and detection circuits of Caldwell ’205. Because Petitioner has failed to do
`so, we determine Petitioner has not established sufficiently that a person of
`
`
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`ordinary skill in the art would have been motivated to combine the teachings
`of Caldwell ’205 and Ingraham ’735 to achieve the claimed invention.5
`Thus, 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 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.
`
`
`5 We note that the Federal Circuit in the Samsung Appeal Opinion vacated
`the Board’s conclusion that Petitioner in the Samsung IPR had not
`established a motivation to combine the references relied on in that
`proceeding. 2019 WL 2511739, at *5. However, that proceeding did not
`involve the issues presented here regarding combinability of Caldwell ’205
`and Ingraham ’735, and does not affect our Decision here.
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`For PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Daniel D. Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`dsmith@fr.com
`
`
`
`
`For PATENT OWNER:
`
`Joseph A. Rhoa
`Jonathan A. Roberts
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`jr@nixonvan.com
`
`
`
`
`
`
`
`23
`
`
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