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`Paper No. 8
`Filed: April 23, 2019
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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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`____________________
`
`
`APPLE, INC.
`Petitioner
`
`v.
`
`UUSI, LLC dba NARTRON
`Patent Owner
`
`____________________
`
`
`Case IPR2019-00357
`Patent No. 5,796,183
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`____________________
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE
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`

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`Case IPR2019-00356
`Patent No. 5,796,183
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`
`EXHIBITS
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`Exhibit Description
`Declaration of Lawrence M. Hadley in support of patent owner’s
`motion for pro hac vice admission
`Declaration of Dr. Darran Cairns in support of patent owner
`preliminary response
`Declaration of David W. Caldwell in support of patent owner
`preliminary response
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`
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`EX. #
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`UUSI-2001
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`UUSI-2002
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`UUSI-2003
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`TABLE OF CONTENTS
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`Case IPR2019-00357
`Patent No. 5,796,183
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`Page
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`I.
`INTRODUCTION ........................................................................................... 1 
`II. BACKGROUND ............................................................................................. 3 
`A.
`The Invention of the ’183 Patent ........................................................... 3 
`B.
`The Asserted Prior Art References........................................................ 7 
`1.
`Caldwell ’205 .............................................................................. 7 
`2.
`Ingraham ’735 ........................................................................... 11 
`3.
`Redmayne .................................................................................. 12 
`4.
`Schwarzbach ............................................................................. 13 
`5.
`Ingraham ’548 ........................................................................... 14 
`6. Meadows ................................................................................... 14 
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION BASED ON SAMSUNG’S RECENT,
`UNSUCCESSFUL IPR CHALLENGING THE SAME CLAIMS .............. 15 
`IV. PETITIONER’S PROPOSED CLAIM CONSTRUCTION SHOULD
`NOT BE ADOPTED ..................................................................................... 23 
`A.
`Claim Construction Standard .............................................................. 23 
`B. Apple’s Proposed Construction of “providing signal output
`frequencies” Is Legally Wrong and Conflicts with the Board’s
`Prior Decision ...................................................................................... 24 
`THE PETITION SHOULD NOT BE INSTITUTED ON ANY
`GROUND ...................................................................................................... 30 
`A.
`[All Grounds]—None of the Asserted References Disclose a
`“Microcontroller” that “Selectively” Provides “Signal Output
`Frequencies” as Required in Each Challenged Claim ........................ 30 
`1.
`Caldwell Does Not Disclose Selectively Providing
`“Signal Output Frequencies” .................................................... 30 
`Caldwell’s “Microcomputer” Does Not Provide Any
`“Frequencies” ............................................................................ 34 
`[All Grounds]—Apple Fails to Offer a Motivation to Combine
`Caldwell with Ingraham ...................................................................... 37 
`1.
`Legal Standard .......................................................................... 37 
`2.
`Apple Offers No Reason Why One of Skill In The Art
`Would Have Been Motivated to Modify Caldwell’s
`Cooktop Key Pad With Ingraham’s Closely-Spaced,
`More Sensitive Touch Plate, to Obtain the Claimed
`Invention ................................................................................... 38 
`[All Grounds]—Apple Fails to Provide Substantial Evidence
`that the Proposed Caldwell-Ingraham Combination Would
`
`V.
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`2.
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`B.
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`C.
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`i
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`Case IPR2019-00357
`Patent No. 5,796,183
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`Work to Solve the Problem Addressed in the ’183 Patent .................. 41 
`1.
`Legal Standard .......................................................................... 41 
`2.
`Substituting Ingraham’s Touch Plate for Caldwell’s
`Touch Pads as Apple Proposes Would Not Work to
`Achieve the Challenged Claims ................................................ 41 
`[Ground 1B]---Claims 64, 90, and 101 Are Not Obvious Over
`Caldwell Combined with Ingraham, Redmayne, and
`Schwarzbach ........................................................................................ 50 
`[Ground 1C]---Claims 65, 91, and 102 Are Not Obvious Over
`Caldwell Combined with Ingraham, Redmayne, and Ingraham
`’548 ...................................................................................................... 51 
`[Ground 1D]—Claims 67-69, and 97-99 Are Not Obvious Over
`Caldwell Combined with Ingraham, Redmayne, and Meadows ......... 51 
`VI. CONCLUSION .............................................................................................. 54 
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`D.
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`E.
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`F.
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`ii
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`I.
`
`INTRODUCTION
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`Cases IPR2019-00357
`Patent No. 5,796,183
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`U.S. Patent No. 5,796,183 (“’183 Patent”) addresses the problem of
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`unintended actuation in densely-spaced, capacitive responsive electronic switching
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`circuit arrays on a touch-operated devices. Ex 1001, 3:64-4:3. This is Apple’s
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`third of six separate petitions for Inter Partes Review (“IPR”) challenging the ’183
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`patent on obviousness grounds. In this IPR, Apple challenges two independent
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`claims (61 and 94) and a number of dependent claims on several grounds: (i)
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`Caldwell ’205 in combination with Ingraham ’735 and Redmayne (claims 61-63,
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`66, 93, 94, 96, and 104); (ii) Caldwell ’205 in combination with Ingraham ’735
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`Redmayne, and Schwarzbach (claims 64, 90, and 101); (iii) Caldwell ’205 in
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`combination with Ingraham ’735, Redmayne, and Ingraham ’548 (claims 65, 91,
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`and 102); and, (iv) Caldwell ’205 in combination with Ingraham ’735, Redmayne
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`and Meadows (claims 67-69 and 97-99).
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`The ’183 Patent has been reexamined twice. More recently, all of the
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`challenged claims were the subject of a recently-concluded IPR in which the
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`Board, after institution, found insufficient evidence to support Petitioner
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`Samsung’s obviousness grounds.1
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`This new IPR challenge, filed shortly on the heels of the last, should not be
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`1 The Board denied institution as to claims 37-39.
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`instituted. Petitioner Apple makes the same challenges using essentially the same
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`Cases IPR2019-00357
`Patent No. 5,796,183
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`prior art that Samsung asserted in the recently-concluded IPR. For this reason
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`alone, the Board should exercise its discretion to not institute this successive
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`Petition. But even aside from Apple’s duplicative challenge, the Petition should
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`not be instituted because Apple fails to show that both (1) the asserted references
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`contain all limitations of the challenged claims, and (2) a skilled artisan would
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`have combined the references to make the challenged claims of the ’183 patent.
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`First, Apple proposes a construction of one phrase used in each challenged
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`claim—“providing signal output frequencies”—that is legally wrong and conflicts
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`with how the Board used the phrase in the prior Samsung IPR. Under the legally
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`correct construction—the same construction already used by the Board in the
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`Samsung IPR—none of the asserted references in the proposed combinations
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`contains the limitation in which the phrase appears.
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`Second, Apple offers no evidence-based rationale for substituting the touch
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`plate keypad used in Ingraham, which contains densely-spaced, highly-sensitive
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`touch pads, into Caldwell’s touch pad used on a touch-control cooktop surface. In
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`fact, Apple’s proposed combination would result in a touch control cooktop
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`susceptible to accidental activation—even if it worked, which it would not.
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`Third, Apple fails to offer evidence that Caldwell’s high frequency
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`oscillator, which reduces unintended activation of a single touch pad due to spilled
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`liquids on a touch-control cooktop, together with its driver and detection circuit,
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`Cases IPR2019-00357
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`would work with Ingraham’s touch plate to solve the problem addressed in the
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`’183 patent—namely, cross-coupling between adjacent touch pads in a densely
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`spaced array caused by surface contamination.
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`Institution should be denied.
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`II. BACKGROUND
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`A. The Invention of the ’183 Patent
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`The ’183 patent addresses the problem of unintended actuation of small
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`touch switches used in capacitive responsive electronic switching circuit arrays on
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`touch-operated devices—providing the foundation upon which today’s touch
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`screen technology is built. Ex. 2002, ¶ 15. Capacitive response electronic
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`switching circuits, in contrast to manual electronic switches, can be used in “zero
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`force” touch switches. These switches have no moving parts and do not require
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`direct contact to switch loads. Ex. 1001 (2:39-41). “Rather, these switches operate
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`by detecting the operator’s touch and then use solid state electronics to switch the
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`loads or activate mechanical relays or triacs to switch even larger loads.” Id.
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`(2:41-44). Zero force touch switches used in touchpad arrays make use of a human
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`operator’s capacitance by detecting the change in capacitive coupling between a
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`touch terminal and ground caused by the operator’s touch. Id. (3:44-46, 53-56).
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`With capacitive response circuits, a human operator need not come into conductive
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`contact with the touch terminal, but instead can activate the switch when in close
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`Cases IPR2019-00357
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`proximity. Id. (3:57-59).
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`While allowing for actuation without actual touch, capacitive response
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`circuits are susceptible to unintended actuation from environmental conditions and
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`surface contamination. Id. (4:18-24). In solving the problem of unintended
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`actuation in capacitive touch circuit arrays, the’183 Patent teaches using an
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`oscillator providing a periodic output signal, a microcontroller that selectively
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`provides signal output frequencies to small sized input touch terminals, and a
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`detector circuit that responds to signals from the oscillator via the microcontroller
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`and the presence of an operator’s capacitance to ground. Id. (Abstract, 6:60-7:5).
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`The inventors also determined that operating the output signals at “a higher
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`frequency than prior art touch sensing circuits” would mitigate unintended
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`actuation. Id. (8:9-14); Ex. 2002, ¶¶ 19-23.
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`The unintended actuation problem is particularly acute in dense arrays of
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`touch circuits as illustrated in Figure 11:
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`Ex. 1001 (Fig. 11). Prior to the ’183 patent, solutions for preventing unintended
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`touch pad actuation in dense arrays included placing guard rings about each touch
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`pad and adjusting detection sensitivity of the threshold voltage such that the
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`operator’s finger had “to entirely overlap a touch terminal and come into contact
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`with its dielectric facing plate before actuation occurs.” Id. (4:1-14).
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`The inventors took a different approach. By analyzing the impedance of
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`contaminants, the inventors concluded that most unintended actuation could be
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`avoided by setting the oscillator frequency at 50 kHz and preferably at 800 kHz or
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`higher. Id. (8:9-14, 11:4-11). More specifically, as described in the specification,
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`the inventors conducted extensive testing to determine the required frequency
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`ranges. For example, with reference to Figure 3A, the ’183 Patent describes tests
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`designed to find the ideal frequency ranges that, for a particular surface and array,
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`would provide a substantial enough “impedance difference between the paths to
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`ground of the touched pad 57 and adjacent pads 59.” Id. (11:1-9) (“This ...
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`result[s] in a much lower incidence of inadvertent actuation of adjacent touch pads
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`to that of the touched pad.”); id. (11:19-25, 17:11-67) (describing tests to reduce
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`crosstalk and resistance due to contaminants); id. (Fig. 9) (showing signal to noise
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`ratio versus body capacitance); Ex. 2002, ¶¶ 25-29.
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`In addition to the use of high oscillator frequencies, the ’183 patent discloses
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`“a floating common and supply that follow the oscillator signal to power the
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`detection circuit.” Id. (6:1-22, 18:66-19:6). The floating common provides a
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`reference that is 5V away from the high-frequency oscillator output signal,
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`enabling the system to compare the signals that are only 5V apart. This 5V
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`differential minimizes noise that otherwise would be generated due to the presence
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`of contaminants on the touch pad. Id. (4:18-20, 5:48-5316:12-24); Ex. 2002, ¶ 25.
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`In Figure 11’s array, the frequencies selected through the front-end testing
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`are supplied to each row. The microcontroller activates each row of the touch
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`circuits by selectively providing a signal from the oscillator to individual rows of
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`the touch circuit. “In this manner, microcontroller 500 can sequentially activate
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`the touch circuit rows and associate the received inputs from the columns of the
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`array with the activated touch circuits.” Ex. 1001 (18:43-49). Supplying high
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`frequencies in this manner substantially reduces unintended actuation (crosstalk)
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`without requiring “any physical structure to isolate the touch terminals” and
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`allowing the terminals to be more closely spaced together. Id. (18:66-19:6).
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`B.
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`The Asserted Prior Art References
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`Caldwell ’205 and Ingraham ’735 are earlier capacitive touch inventions
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`from the same inventors that the Board considered and rejected in the Samsung
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`IPR. In other words, to avoid asserting the exact same art considered in the just-
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`concluded IPR, Apple turned to the same inventors, but picked earlier patents from
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`those inventors—patents that disclose inventions much less relevant to the ’183
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`Patent than those already considered (and rejected) in the Samsung IPR. None of
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`the other asserted references adds anything to the Caldwell ’205 and Ingraham
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`’735 patents that would have made the ’183 Patent any more obvious.
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`1.
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`Caldwell ’205
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`Although considered during the prosecution of the ’183 Patent, Apple asserts
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`Caldwell ’205 as its primary reference for each asserted ground:
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`In each alleged obviousness combination, Apple argues that a person skilled in the
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`art would have substituted the touch pad in Caldwell with the touch plate in
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`Ingraham ’735. For each ground, Apple further argues that a person skilled in the
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`art would have not only substituted the touch pad in Caldwell with the touch plate
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`in Ingraham ’735, but then also substituted other components from Caldwell with
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`components from Redmayne, Meadows, Schwarzbach, and/or Ingraham ’548 to
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`arrive at the challenged ’183 Patent claims.
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`Caldwell ’205 pertains to capacitance-responsive touch-control input devices
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`on horizontal substrates, such as smooth-top induction, radiant, and halogen burner
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`cooking appliances. Caldwell illustrates the touch control in Figure 1:
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`Ex. 1004 (1:5-10); Ex. 2003, ¶ 3. The Caldwell patent addresses issues unique to
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`horizontal touch-control surfaces such as interference with the touch controls from
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`liquids spilled on a cooktop. Id. (1:18-23); Ex. 2003, ¶ 4. Rather than avoid
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`interference from spills by separating the touch control from the cooking surface or
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`by using guard rings around the touch-control, Caldwell teaches several alternative
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`solutions. Ex. 2003, ¶ 4.
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`First, Caldwell uses a source signal generator that inputs a high frequency
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`signal—a single frequency in the range between 150 kHz and 500 kHz—to the
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`drive lines of the touch keypad sequentially from a demultiplexer at the direction
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`of a microcontroller. Ex. 1004 (2:26-30; 6:18); Ex. 2003, ¶ 4. Within a single
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`touch pad, the touch pad couples the electrical signal to another portion of the
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`touch pad in order to develop a detection signal, and responds to the presence of a
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`user’s capacitance to selectively attenuate the detection signal. A decoding circuit
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`responds to the detection signal in order to determine the presence of the
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`capacitance of a user. Ex. 1004 (2:22-25); Ex. 2003, ¶ 4. This circuit is illustrated
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`in Figure 5:
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`Second, Caldwell juxtaposes the display with the substrate’s modulated
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`surface to provide visual indications to a user. Ex. 1004 (3:3-12); Ex. 2003, ¶ 5.
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`An optical correction material is provided between the display and the substrate,
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`which corrects optical distortion of the visual indications of the display caused by
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`the modulated surface. The optical correction material is a transparent adhesive
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`that adheres a flexible carrier carrying the display device or the touch pad flexible
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`conductor to the glass substrate. Ex. 1004 (3:3-12); Ex. 2003, ¶ 5.
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`2.
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`Ingraham ’735
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`Ingraham ’735, like the later Ingraham ’825 patent (U.S. Patent No.
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`5,087,825)—invented by Nartron employee Ronald D. Ingraham and assigned to
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`Nartron—was considered and extensively discussed in the ’183 Patent. Ex. 1001
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`(3:44-50; 4:3-8; 5:43-50; 6:6-16; 8:11-18; 18:1-10). Additionally, both Ingraham
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`’735 and Ingraham ’825 were expressly considered, and rejected, in the recently-
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`concluded Samsung IPR. Indeed, Samsung asserted the later Ingraham ’825 patent
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`as its primary reference. Samsung Elect. Co. v. UUSI, IPR2016-00908, Paper 2 at
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`2, 3. Unlike the ’183 Patent, Ingraham ’735, like Ingraham ’825, lacks any
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`disclosure of the signal voltage supplied to Ingraham’s circuit. Accordingly,
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`neither Ingraham reference teaches or suggests an oscillator voltage greater than a
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`supply voltage as taught in the ’183 Patent.
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`The early Ingraham ’735 patent disclosed a breakthrough in capacitive touch
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`technology at the time. But it not only differs vastly from the ’183 Patent, it
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`addresses an entirely different problem. In particular, the Ingraham ’735 patent is
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`Cases IPR2019-00357
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`directed to a capacitive touch-controlled electrical switching circuit for portable
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`direct current devices where no alternating current voltage is available, such as in
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`automobiles, trucks, boats, and airplanes. Ex. 1017 (1:10-14, 30-40.) A direct
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`current operates an oscillator, which applies a signal to a touch plate coupled to a
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`detector circuit. The detector includes either a voltage dividing capacitive system
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`or a phase detector circuit. In either case, the output signal from the phase detector
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`circuit or the voltage divider provides a control signal, which can be used for
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`actuating a solid-state switch for providing control functions. Id. (1:41-50.)
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`3.
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`Redmayne
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`Redmayne addresses the problem of proximity effects and electromagnetic
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`noise on capacitive touch sensors. Redmayne uses horizontal sensor bars arranged
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`in a single direction. With this arrangement, the touch sensor receives differential
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`sensor signals from the sensor array to reduce proximity effects and noise
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`associated with conventional capacitive touch sensors. The touch sensor also
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`utilizes an isolation circuit or floating interface to reduce the effects of external
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`interference and increase the accuracy of touch sensing and localization. Finally,
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`Redmayne’s touch sensor may be utilized with display screens having thick
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`dielectrics and also eliminates the need for a rear guard layer. Ex. 1012 (Abstract).
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`4.
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`Schwarzbach
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`Cases IPR2019-00357
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`Schwarzbach discloses an improved appliance control system for providing
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`communication between a central control unit and remote slave units over common
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`power lines such as a building’s power supply. Ex. 1014 (2:3-6). The appliance
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`control system includes a central control unit and a number of slave units each
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`including a user-programmable microprocessor. Appliances and light fixtures are
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`plugged into a respective slave unit, which is plugged into outlet sockets of a
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`power main in a building. This permits manual or automatic transmission of
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`command signals and status request signals from the central control unit to
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`individually addressed slave units, and transmission of status signals from the slave
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`units to the central control unit. Id. (Abstract).
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`The central control unit includes a display panel, which is coupled to a
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`microprocessor, and a keyboard. Id. (4:28-29, 4:50-51). The keyboard is
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`connected as a 3×8 matrix, with its row pins 1 through 8 connected to
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`corresponding microprocessor output terminals. Key depresses are detected by
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`driving output terminals and scanning for closed keys. Specifically, the
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`microprocessor sequentially drives its output terminals to a high level for a set
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`interval. All keyboard pins are scanned once during each cycle of AC line voltage
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`for simultaneously driving the keyboard rows and the displaying the panel
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`character terminals. During the time that a keyboard row pin is held high, the
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`microprocessor looks at its input wires to determine whether a key is closed.
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`When the key closure is detected, the microprocessor takes the appropriate action
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`after the end of that keyboard scan. Id. (4:55 to 5:1).
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`5.
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`Ingraham ’548
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`Like the later Ingraham patents, this earliest of the Ingraham patents
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`discloses a touch control switch circuit. Ex. 1016 (Abstract). Ingraham ’548,
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`invented by a Nartron engineer and considered in prosecution of the ’183 patent,
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`improves reliability of touch-controlled switching circuits since it does not rely
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`upon induced voltage for its operation. Rather, the body capacitance of the person
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`actuating the switch is coupled in a voltage dividing circuit used to provide a logic
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`output signal for controlling a DC trigger level applied to a Triac or other bilateral
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`solid-state switch coupled between the line voltage source and a load to be
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`controlled. By utilizing a direct current control signal for the solid-state switch, the
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`switch is rendered conductive near the beginning of each half-cycle of operation
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`and remains conductive during each half-cycle of each cycle of operation. Thus,
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`through a DC gate signal, inductive loads such as fluorescent lights and motors,
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`may be controlled. Id. (1:38-66).
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`6. Meadows
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`Meadows discloses a capacitive touch panel system of the type used with a
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`pen or stylus. Ex. 1013 (1:12-15). The Meadows patent addresses electromagnetic
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`interference caused by the conductive coating on the faceplate and the touch panel
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`system, which generates electromagnetic noise that can make it difficult to
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`determine a touch location. Id. (1:51-63). As disclosed, Meadows reduces
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`susceptibility to electromagnetic noise by using a “lock-in type” signal
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`demodulator and low-pass filter. Id. (2:61-68). The signal demodulator, in
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`response to a pseudo-random number signal, employs a random frequency
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`measurement signal with a frequency between 150 kHz and 250 kHz as reference
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`for demodulating the positive and negative differential output signal. Id. (2:61-64,
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`4:28-32). This signal is fed into the low pass filter, which provides from the
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`demodulated signal a substantially steady-state address signal that corresponds to
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`an average of the magnitude of the current drawn through a bar electrode. Id.
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`(2:64-68).
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION BASED ON SAMSUNG’S RECENT,
`UNSUCCESSFUL IPR CHALLENGING THE SAME CLAIMS
`The Board has discretion “to deny a petition that challenges a patent that was
`
`previously challenged before the Board.” Shenzhen Silver Star Intelligent Tech.
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`Co., Ltd. v. iRobot, IPR2018-00898, Paper 9 (Oct. 1, 2018); General Plastic
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`Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 (Sept.
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`6, 2017); 35 U.S.C. §§ 314(a) and 314(d) (providing the Board with discretion to
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`reject petitions where the same, or substantially the same, prior art or arguments
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`have already been presented). General Plastic addresses the factors considered in
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`determining whether to institute review for serial, or “follow-on” petitions.
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`Apple argues that the factors “weigh heavily against denial because any
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`delay in Apple’s IPR relative to Samsung’s IPR was caused by Patent Owner’s
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`delay in bringing suit against Apple.” Pet. at 5. But Apple strategically waited
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`until the one-year deadline after Patent Owner filed the underlying lawsuit against
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`it to maximize both the time between IPRs and the time it could ask that the
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`underlying case be stayed.
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`While Patent Owner did bring the underlying action against Apple
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`approximately two years after suing Samsung, it did so for good reason. Rather
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`than litigate multiple cases simultaneously, Patent Owner decided to complete
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`claim construction proceedings in the Samsung case before evaluating potential
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`claims against others. But shortly before the District Court’s claim construction
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`hearing, Samsung filed its IPR on all asserted claims and moved to stay the
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`underlying case. Prior to issuing a claim construction ruling, the District Court
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`granted the stay, which remains in place to this day while Samsung appeals the
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`Board’s decision to the Federal Circuit.2 Filing new cases against other accused
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`2 The Court of Appeals for the Federal Circuit has scheduled oral argument on
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`Samsung’s appeal for May 13, 2019.
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`infringers almost certainly would have been futile because any such cases would
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`have been stayed pending the conclusion of the Samsung IPR.
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`In the meantime, the Samsung IPR proceeded. During the IPR proceeding,
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`the ’183 Patent expired on January 31, 2016. The Board in the Samsung IPR
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`issued its Final Written Decision on October 18, 2017. With the ’183 Patent
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`expired and the limitations period on past damages running, Patent Owner filed
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`suit against Apple on November 29, 2017, approximately six weeks later. At the
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`time, Apple certainly knew about the Samsung IPR and could have evaluated the
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`docket to quickly determine the status of the Samsung IPR, whether Samsung had
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`made the best arguments, and whether Samsung had asserted the closest prior art.
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`But rather than bring its own IPRs within a reasonable time, Apple waited an entire
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`year, until November 29, 2018 (the one-year anniversary of the lawsuit against it),
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`to file six new IPRs. By waiting a year, Apple cannot claim to be a victim of
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`Patent Owner’s delay.
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`Denying this petition is not only fair but warranted under the General
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`Plastic factors. The first two factors weigh in favor of non-institution. Although
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`Apple did not previously file a petition directed to the same claims of the same
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`patent, Samsung did. Apple certainly knew of Samsung’s IPR—Apple even
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`suggested that the case against it be stayed pending the completion of Samsung’s
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`appeal of the Final Written Decision to the Federal Circuit. Apple also must have
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`studied Samsung’s IPR because Apple argues that its six IPRs make “new”
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`Cases IPR2019-00357
`Patent No. 5,796,183
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`arguments about the same prior art that the Board did not consider in finding that
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`Samsung failed to prove obviousness of any challenged claims. Pet. at 4.
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`With respect to the second factor in particular, Apple’s assertion that it “did
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`not know of any of the prior art references relied on in [its] Petition when Samsung
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`filed its IPR” is at best misleading. Id. at 5. A quick search of the USPTO’s
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`records reveals that Caldwell ’205 and Meadows each apparently have been cited
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`in connection with at least 20 issued Apple patents—numerous ones of which were
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`filed and granted years before Samsung was even sued. (For instance, Caldwell
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`’205 was cited in Apple Patent No. 8,416,209 issued April 9, 2013, and Meadows
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`was cited in Apple Patent No. 8,232,970 issued July 31, 2012.) The second factor
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`alone thus weighs strongly against institution, insofar as half of the references
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`(including the main reference it relies upon) were known to Apple years before
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`Apple filed its Petition.
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`The third factor—whether at the time of filing of the second petition the
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition—plainly weighs in favor of denial, and Apple does not argue otherwise.
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`Indeed, the timing of Apple’s filing in this case raises the potential for abuse,
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`because Apple had ample opportunity (nearly 11 months) to study all of the
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`arguments raised by Patent Owner and Samsung regarding the commonly
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`Cases IPR2019-00357
`Patent No. 5,796,183
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`challenged claims of the ’183 patent. See Shenzhen Silver Star Intelligent Tech,
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`IPR2018-00761, Paper 15, 11-12 (09/05/2018). In fact, it appears that Apple used
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`Samsung’s earlier petition as a guide to find the additional relied-upon art that it
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`was not already aware of, and then used the Final Written Decision as a roadmap
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`for this IPR. Compare Pet. at 3-4 & 8-9 (confirming the attempt to use Caldwell
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`‘205 and the two Ingraham references as had Samsung, and adopting claim
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`constructions from the Final Written Decision Apple apparently perceives as
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`favorable to it), with Pet. at 7-8 (attempting (albeit unsuccessfully) to distinguish
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`an implicit claim construction Apple apparently perceives as unfavorable to it).
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`General Plastic and Shenzhen confirm that this gamesmanship is impermissible—
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`and this factor thus weighs in favor of denial for these further reasons.
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`Apple argues that the fourth factor—the length of time that elapsed between
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`the time the petitioner learned of the prior art asserted in the second petition and
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`the filing of the second petition—weighs against denial. Pet. at 5. But it does not.
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`Apple asserts that the prior art it now raises was unknown at the time the Samsung
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`IPR concluded. Pet. at 5. That is false. Apple’s statement overlooks the fact that
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`Caldwell ’205, Redmayne, and Meadows were cited in connection with numerous
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`of Apple’s own patents. Rather than assert the same prior art that Apple knew
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`Samsung had asserted in Samsung’s IPR petitions, and prior art that formed the
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`core of the Board’s analysis in the Final Written Decision, Apple simply picked
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`Cases IPR2019-00357
`Patent No. 5,796,183
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`earlier patents from the same inventors—namely, Caldwell and Ingraham—that
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`disclose earlier, less developed versions of their later inventions. Apple’s selection
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`of less relevant patents from the same inventors as those relied upon by
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`Samsung—two of which were known to Apple based on its own patent prosecution
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`activities—weighs in favor of discretionarily denying Apple’s petition, not
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`granting it.
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`Apple argues that the fifth factor weighs against denial because the time
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`elapsed between Samsung’s petition and Apple’s petition rests with Patent Owner.
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`Pet. at 6. But as discussed above, the facts show that Apple willingly elected to
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`delay for a year the filing of its own IPRs to maximize the time between IPRs
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`challenging the same claims in the ’183 Patent, and so it could keep the underlying
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`district court action stayed as long as possible.
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`With respect to the fourth and fifth factors collectively, as shown above, the
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`record establishes that Apple in 2013 was aware of three of the six references
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`asserted in the instant Petition—and was aware of a third reference (Ingraham),
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`and a more relevant version of it, prior to the filing of this IPR, from Samsung’s
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`IPR. Apple does not provide any credible explanation related to the timing of its
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`Petition and, as the Board has noted, “[t]o the extent a reasonable explanation
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`exists for Petitioner’s delay, it [i]s incumbent upon Petition to identify those
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`circumstances to the Board.” See Shenzhen Silver Star Intelligent Tech., Paper 15,
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`Cas