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`Hfinigman Miiiier Schwartz and Com LLP
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`315 East Eisenhower Pamway
`Suite 139
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`Ann Arbor, Mi 48308
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`{1734) 4383254
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`mhuget@honigman.mm
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`1
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`APPLE 1002
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`1
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`APPLE 1002
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS COMPANY, LTD.
`Petitioner
`
`V.
`
`UUSI, LLC d/b/a NARTRON
`Patent Owner
`
`CaséIPR2016-00908
`PatentNo. 5,796,183
`
`—.‘
`
`
`
`“
`_-:._=:
`
`.
`
`PETITIONER’S NOTICE OF APPEAL
`
`2
`
`
`
`Case IPR2016—00908
`
`Patent 5,796,183
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`Notice is hereby given, pursuant to 37 CPR. § 90.2(a), that Petitioner
`
`Samsung Electronics Company, Ltd. (“Petitioner”) appeals to the United States
`
`Court of Appeals for the Federal Circuit from the Final Written Decision entered
`
`on October 18, 2017 (Paper 35) (the “Final Written Decision”) by the United
`
`States Patent and Trademark Office, Patent Trial and Appeal Board (the “Board”),
`
`and from all underlying orders, decisions, rulings, and opinions. A copy of the
`
`Final Written Decision is attached.
`
`In accordance with 37 CPR. § 90.2(a)(3)(ii), Petitioner indicates that the.
`
`issues on appeal include, but are not limited to, the Board’s ruling. that Petitioner
`
`has not demonstrated, by a preponderance of the evidence, that the claims of US.
`
`Patent No. 5,796,183 (“the ’ 183 patent”) are unpatentable over the prior art, and
`
`any findings or determinations supporting or related to that ruling including,
`
`Without limitation, the Board’s interpretation of the claims and prior art, reasons to
`
`combine and expectation of success, and the Board’s interpretation of expert
`
`evidence.
`
`3
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`
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`Case IPR2016-00908
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`Patent 5,796,183
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
`
`filed with the Board. In addition, the Notice of Appeal and the required fee are
`
`being filed electronically with the Clerk of Court for the United States Court of
`
`Appeals, for the Federal Circuit.
`
`Respectfully submitted this 18th day of December, 2017.
`
`
`/Naveen Modi/
`By:
`Naveen Modi
`
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, NW.
`Washington, DC 20005
`(202) 551—1700
`naveenmodi@paulhastings.com
`
`Counselfor Petitioner
`
`4
`
`
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`Case IPR2016-00908_
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`Patent 5,796,183
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in addition to being filed electronically
`
`through Patent Trial and Appeal Board End to End (PTAB E2E), the original
`
`version of this Notice of Appeal was filed by express overnight mail on December
`
`18, 2017 with the Director of the United States Patent and Trademark Office, at the
`
`following address:
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314—5793
`
`The undersigned also certifies that a true and correct copy of this Notice of
`
`Appeal and the required fee were filed electronically via CM/ECF on December
`
`18, 2017, with the Clerk of Court for the United States Court of Appeals for the
`
`Federal Circuit.
`
`The undersigned also certifies that a true and correct copy of this Notice of
`
`Appeal was served on December 18, 2017, on counsel of record for Patent Owner
`
`UUSI, LLC d/b/a Nartron by electronic mail (by agreement of the parties) at the
`
`following address:
`
`Jay Kesan (jay@keyiplaw.com)
`Teresa M. Summer (teresa@keyiplaw.com)
`DiMuro Ginsberg PC—DGKeyIP Group,
`1101 King Street, Ste. 610
`Alexandria, VA 22314
`
`5
`
`
`
`Case IPR2016-00908
`
`Patent 5,796,183
`
`Date: December 18, 2017
`
`By:
`
`/Naveen Modi/
`
`Naveen Modi
`
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, NW.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@pau1hastings.com
`
`Counselfor Petitioner
`
`6
`
`
`
`Trials@uspt0.gov
`571-272—7822
`
`Paper 35
`Entered: October 18, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`V.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`Case lPR2016—00908
`
`Patent 5,796,183 ~
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANT, Administrative Patent Judges.
`
`JTVANI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 318{a) and 37 C.F.R. § 42. 73
`
`7
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`IPR2016-00908
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`Patent 5,796,183
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`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Petitioner”) sought inter partes
`
`review of claims 37-41, 43, 45, 47, 48, 61—67, 69, 83—86, 88, 90, 91, 94, 96,
`
`97, 99, 101, and 102 ofU.S. Patent No. 5,796,183 (Ex. 1001, “the ’183
`
`paten ”), owned by UUSI, LLC d/b/a Nartron (“Patent Owner”). Paper 2
`
`(“Petition” or “Pet.”). Patent Owner filed a Preliminary Response. Paper 10
`
`(“Prelim Resp”). Upon consideration of the Petition and Preliminary
`
`Response, we instituted an inter partes review of claims 40, 41, 43, 45, 47,
`
`48, 61—67, 69, 83—86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the
`
`“Instituted Claims”) pursuant to 35 U.S.C. § 314. Paper 12 (“Decision on
`
`Institution” or “Dec. on Inst”). We did not institute, however, review of
`
`claims 37—39 because we determined Petitioner had not established a
`
`reasonable likelihood that it would prevail with respect to those claims. Id.
`
`During the trial, Patent Owner filed a Patent Owner Response
`
`(Paper 21, “PO Resp”), and Petitioner filed a Reply thereto (Paper 24,
`
`“Reply”). An oral hearing was conducted on June 22, 2017 . The record
`
`contains a transcript of the hearing (Paper 34, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`
`preponderance of the evidence. See 35 U.S.C. § 316(c); see also 37 C.F.R.
`
`§ 42.1(d). This Final Written Decision is entered pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`
`has not shown by a preponderance of the evidence that any of the Instituted
`
`Claims are unpatentable.
`
`A.
`
`Related Proceedings
`
`The ’183 patent has been subject to two reexaminations: Ex Parte
`
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
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`8
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`IPR2016-00908
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`Patent 5,796,183
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`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014
`
`(“Reexam 2’”). The Instituted Claims were added during Reexam 2. See
`
`generally Ex. 1006.
`
`The ’183 patent is the subject of ongoing litigation between the parties
`
`in the Western District of Michigan: UUSI, LLC d/b/a Nartron v. Samsung
`
`Electronics Ca, Ltd. and Samsung Electronics America, Inc., Case No.
`
`1:15-cv—00146-JTN, originally filed on February 13, 2015 (W.D. Mich.)
`
`(the “District Court litigation”). Pet. 1. The District Court litigation is
`stayed and administratively closed until resolution of the instant interpartes
`
`review. Order, Case No. 1:15-cv-00146-JTN, Dkt. No. 62 (filed 05/02/16).
`
`B.
`
`The ’J 83 patent (Ex. 1001)
`
`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
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`loads. Id. at 1:40—41. Instead, such switches detect an operator’s touch and
`
`use solid state electronics to switch loads or activate mechanical relays. Id.
`
`at 1:42—44. “A common solution used to achieve a zero force touch switch
`
`has been to make use of the capacitance of the human operator.” Id. at 3:12—
`
`14. 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 3:14—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 that lowers the amplitude of
`
`oscillator voltage seen at the touch termina .” Id. at 3:52—56. Significantly,
`
`the operator of a capacitive touch switch using this method need not come in
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`IPR2016-00908
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`Patent 5,796,183
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`conductive contact with the touch terminal. Id. at 3:57—59. Rather, the
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`operator needs only to come into close proximity of the switch. Id.
`
`Figure 11 of the ’ 183 patent is reproduced below.
`
`
`300
`200
`
`100
`
`COMMON
`
`OSCILLATOR
`
`VOLTAGE
`REGULATOR
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`-
`-
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`Fig. 11
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`
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`-LOATINGI.ENERATOR
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`
`
`
`
`
`J's.
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`
`MICRO-
`CONTROLLER
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`Figure 11 depicts a “multiple touch pad circuit” including “an array of
`
`touch circuits.” Id. at 18:34—46. The ’183 patent recognizes that placing
`
`capacitive touch switches in dense arrays can result in unintended actuations.
`
`Id. at 3:65—423. One method of addressing this problem known in the ‘art
`
`involves placing guard rings around each touch pad. Id. at 4:4—10. Another
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`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
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`terminal. Id. at 4:10—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.
`
`10
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`10
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`IPR2016-00908
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`Patent 5,796,183
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`The ’183 patent seeks 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. 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.
`
`C.
`
`' Illustrative Claim
`
`Independent claim 40 illustrates the claimed subject matter and is
`
`reproduced below.
`
`40. A capacitive responsive electronic switching circuit
`comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`'
`'
`a microcontroller using the periodic output signal from
`the oscillator, the microcontroller selectively providing signal
`output frequencies to a plurality of small sized input touch
`terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
`output frequency to each row of the plurality of small sized
`input touch terminals of the keypad;
`the plurality of small sized input touch terminals defining
`adjacent areas on a dielectric substrate for an operator to
`provide inputs by proximity and touch; and
`a detector circuit coupled to said oscillator for receiving
`said periodic output signal from said oscillator, and coupled to
`said input touch terminals, said detector circuit being
`responsive to signals fi'om said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said touch terminals when
`
`11
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`11
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`[PR2016—OO908
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`Patent 5,796,183
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`proximal or touched by the operator to provide a control output
`signal,
`wherein said predefined frequency of said oscillator and
`said signal output frequencies are selected to decrease a first
`impedance of said dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`D.
`
`Cited References
`
`Petitioner relies on the following references:
`
`1. Ingraham, U.S. Patent No. 5,087,825, issued Feb. 11, 1992,
`
`(Ex. 1007, “Ingraham I”) along with portions of Ingraham, U.S.
`
`Patent No. 4,731,548, issued Mar. 15, 1988 (EX. 1008, “Ingraham
`
`II”) incorporated by reference.
`
`2. Caldwell, U.S. Patent No. 5,594,222, issued Jan. 14, 1997
`
`(EX. 1009, “Caldwell”).
`
`3. Gerpheide et al., U.S. Patent No. 5,565,658, issued Oct. 15, 1996
`
`(Ex. 1012, “Gerpheide”).
`
`4. Wheeler et al., U.S. Patent No. 5,341,036, issued Aug. 23, 1994
`
`(EX. 1015, “Wheeler”).
`
`E.
`
`Instituted Grounds of Unpatentabilizy
`
`We instituted trial based on two grounds of unpatentability under
`
`9
`
`35 U.S.C. § 103(a) (Dec. on Inst. 31):
`
`12
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`IPR2016-00908
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`Patent 5,796,183
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`
`
`Ingraham I, Caldwell, 40, 41, 43, 45, 61, 64—67, 69,
`Gerpheide
`83, 85, 86, 88, 90, 91, 94, 96,
`
`97, 99,101, and 102
`
`Ingraham I, Caldwell,
`Gerpheide, Wheeler
`
`
` 47, 48, 62, 63, and 84
`
`
`
`
`
`F.
`
`Testimony
`
`Petitioner supports its challenges with a declaration of Dr. Vivek
`
`Subramanian (Ex. 1002), filed contemporaneously with the Petition, and a
`
`rebuttal declaration of Dr. Subramanian (Ex. 1017), filed contemporaneously
`
`with the Reply. Dr. Subramanian testified further by deposition on
`
`. February 3, 2017, and a transcript of his testimony has been entered into
`
`evidence. Ex. 2009.
`
`Patent Owner rebuts Petitioner’s challenges with a declaration of
`
`Dr. Darran Cairns (Ex. 2002), filed contemporaneously with the Preliminary
`
`Response, and an additional declaration of Dr. Cairns (Ex. 2010), filed
`
`contemporaneously with the Patent Owner Response. Dr. Cairns testified
`
`'further by deposition on April 21, 2017, and a transcript of his testimony has
`
`been entered into evidence. Ex. 1018.
`
`II.
`
`ANALYSIS
`
`A.
`
`Principles ofLaw
`
`To prevail in its challenges to the Instituted Claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`13
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`IPR20 l 6-0090 8
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`Patent 5,796,183
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`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time of the invention to a person
`
`having ordinary skill in the art.
`
`ICS'R 1711“] Co. v. Teleflex, Inc, 550 US. 398,
`
`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) where in evidence,
`
`so—called secondary considerations, including commercial success, long-felt
`
`but unsolved needs, failure of others, and unexpected results. Graham v.
`
`John Deere C0,, 383 US. 1, 17—18 (1966).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Citing testimony of its declarant, Dr. Subramanian, Petitioner
`
`contends that a person having ordinary skill in the art at the time of the
`
`invention would have had a minimum of: (1) a bachelor’s degree in
`
`electrical engineering, or equivalent thereof; and (2) “two to three years of
`
`experience in the relevant field, which includes touch systems technology.”
`
`Pet. 3 (citing Ex. 1002 11 19).
`
`Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary
`
`skill “in the art of capacitive touch sensors would have had at least a
`
`bachelor’s degree in physics or electrical engineering or equivalent industry -
`
`experience in the field.” Ex. 2002 11 14.
`
`The levels of ordinary skill proposed by the parties do not differ
`significantly. Both parties’ proposed descriptions require at least an
`
`undergraduate degree in electrical engineering or related technical field, and
`
`both value industry experience (although Petitioner quantifies this
`
`experience as two to three years). We adopt Petitioner’s proposed definition
`
`14
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`[PR2016-00908
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`Patent 5,796,183
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`as more representative, but note that our analysis would be the same under
`
`either definition. We further find the level of ordinary skill in the art is
`
`reflected by the prior art of record. See Okajima v. Bourdeau,
`
`261 F.3d 1350, 1355 (Fed. Cir.'2001); In re GPACInc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`C.
`
`Claim Construction
`
`The ”183 patent expired on January 31, 2016. Pet 11; Prelim. Resp. 7.
`
`Our review of the claims of an expired patent is “similar to that of a district
`court’s review,” wherein claim terms are given their ordinary and customary
`meaning as understood by. a person of ordinary skill in the art at the time of
`
`the invention, as set forth by the Court in Phillips v. AWH Corp., 415 F .3d
`
`1303, 1312—14 (Fed. Cir. 2005) (en bane). In re Rambus, Inc., 694 F.3d 42,
`
`46 (Fed. Cir. 2012); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2144—45 (2016). Any special definition for a claim term must be set
`
`forth in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Petitioner urges that we need not construe the terms of the Instituted
`
`Claims. Pet 12. To the extent we construe a particular term, Petitioner urges
`
`that we adopt the constructions it proposed in the District Court litigation.
`
`Id. In its Preliminary Response, Patent Owner sought construction of three .
`
`sets (if claim limitations, namely:
`1. “peak voltage of the signal output frequencies is greater than a
`
`supply voltage” as recited in each of independent claims 61, 83,
`
`and 94 (hereinafter, the “supply voltage limitation”);
`
`2. “closely spaced array of input touch terminals of a keypad,” as
`
`recited in each of independent claims 83 and 94 and “small
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`15
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`IPR2016-00908
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`Patent 5,796,183
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`sized input touch terminals of a keypad,” as recited in each of
`
`independent claims 40 and 61 (collectively, the “input touch
`
`terminals limitations”); and
`
`3. “selectively providing signal output frequencies,” as recited in
`
`each of independent claims 40, 61, 83, and 94.
`
`Prelim. Resp. 9—19.
`
`We declined to adopt Patent Owner’s constructions of these
`
`limitations in our Decision on Institution. Dec. on Inst. 10—12. In so doing,
`
`we determined that one of ordinary skill in the art would understand the term
`
`“supply voltage” in the supply voltage limitation as referring to a supply
`
`voltage of the claimed microcontroller. Id. at 10. Contrary to Patent
`
`Owner’s contention, we determined the claim language does not restrict the
`
`supply voltage to exclude an external commercial power supply. Id. We
`
`. further determined in our Decision on Institution that the input touch
`
`terminals limitations do not preclude the presence of physical structures
`
`isolating adjacent touch terminals. Id. at 10—11. Although we addressed
`
`Patent Owner’s proposed constructions of the limitations enumerated above,
`
`we did not construe further these limitations because additional construction
`
`was not necessary to our analysis on whether to institute a trial. Id. at 12.
`
`Neither party contests our construction of each limitation, as set forth
`
`in our Decision on Institution. PO Resp. 7; see generally Reply. Based on
`
`the full record developed during this proceeding, we find no need to depart
`
`from our constructions set forth above. We also find no need to construe
`
`further any terms of the Instituted Claims because further construction is not
`
`necessary to our analysis herein. Vivid Techs., Inc. v. Am. Sci. & Eng ’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms in
`
`10
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`IPR2016—00908
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`Patent 5,796,183
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`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy).
`
`D.
`
`Obviousness based on Ingraham I, Caldwell, and Gerpheide
`
`Petitioner asserts each of independent claims 40, 61, 83, and 94
`
`would have been obvious over the combined teachings of Ingraham I,
`
`Caldwell, and Gerpheide. Pet. 39—49.
`
`1.
`
`Ingraham 1 (Ex. 1007) and Ingmham [1 (Ex. 1008)
`
`Ingraham I discloses a capacity response keyboard, which is depicted
`
`in Figure 1 reproduced below. EX. 1007 at 2:19—20.
`
`
`
`Figure 1 shows a perspective View of Ingraham I’s capacity response
`
`keyboard, consisting of switches that respond to the change in capacity from
`
`a user touching the switch. Ex. 1007, 1:5—9. Each switch includes a touch
`
`plate assembly and a control circuit. Id. at 2:28—35, Figs. 2, 3. Each touch
`
`plate assembly includes a guard band that reduces interference between the
`
`switches. Id. at 2:46—49, Abstract. When a keyboard user touches the outer
`
`surface of the switch, the capacity-to-ground for the switch’s touch plate
`
`11
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`increases. Id. at 3:1—6, 3:21—47. This increase is detected by the switch’s
`
`touch sensing circuit, which sends an output signal to a microcomputer. Id.
`The ’183 Patent Specification makes several references to Ingraham 1,
`
`including describing IngrahamI as operating at relatively lower frequencies
`
`than the invention of the ’183 Patent. EX. 1001, 8:11—14; see also id. at
`
`3:44—50, 4:3—8, 6:6—16, 1821—10. According to the ’183 patent:
`
`The specific touch detection method of the present
`invention has similarities to the devices of U.S. Pat. No.
`4,758,735 and U.S. Pat. No. 5,087,825 [Ingraham 1].
`However, significant
`improvements are offered in the
`means of detection and in the development of an overall
`system to employ the touch switches in a dense array and
`in an improved zero force palm button.
`The touch
`detection circuit of
`the present
`invention features
`operation at frequencies at or above 50 kHz and preferably
`at or above 800 kHz to minimize the effects of surface
`contamination from materials such a skin oils and water.
`
`Id. at 5:43—53.
`
`Ingraham I incorporates by reference certain portions of prior art
`
`patent Ingraham H, upon which Petitioner relies as meeting certain
`
`limitations of the Instituted Claims. Pet. 9 (citing Ex. 1007, 3:21—24 as
`incorporating Ingraham 11’s control circuit 14 (“A detailed description of
`
`control circuit 14 is provided in U.S. Pat. No. 4,731,548, issued Mar. 15,
`
`1988 to Ronald Ingraham, the disclosure of which is hereby incorporated
`
`herein by reference.”)).
`
`2.
`
`Caldwell (Ex. 1009)
`
`Caldwell discloses a touch pad system, including a touch sensor that
`
`detects user contact, for use in kitchens. Ex. 1009, 126—9, 1:42—44, 2:45—48.
`
`Caldwell’s touch pad includes “an active, low impedance touch sensor
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`12
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`18
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`attached to only one side of a dielectric substrate.” Id. at 2:22—23. Figure 6
`
`of Caldwell is reproduced below.
`
`
`
`FIG-6
`
`Figure 6 of Caldwell shows a matrix of touch pads comprising a touch
`
`panel. Id. at 5:60—61. To monitor the touch pads, CaldWell’s system
`sequentially provides an- oscillating square wave signal to a row or column
`oftouch pads and then sequentially selects columns or rows of sense
`electrodes 24 to sense the signal output from the 'touch pad. Id. at 4:39—51,
`
`6:40—63.
`
`3.
`
`Gerpheide (Ex. 1 012)
`
`Gerpheide discloses a capacitive touch responsive system that detects
`
`the location of a touch in a single point input device, such as those used to
`
`provide data input in lieu of a mouse or stylus. EX. 1012, 1:10—14, 1:19—20,
`
`2:61—3:12. Figure 2b of Gerpheide is reproduced below.
`
`13
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`19
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`19
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`
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`IPR2016—00908
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`Patent 5,796,183
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`We!
`Plano
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`"HHIIIIIIHIIIIIA‘WJ
`IIIIJIIIIIIIIIIIIIIIIIIUIHIIIIIIIIIIHIIIIIHH‘I I Il‘llJllIllIPII
`
`
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`lnsufator 31
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`In
`$1113(or
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`32
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`Insulator 33
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`Fig. 2b
`
`Figure 2b illustrates a cross-sectional View of a touch pad. Id. at
`
`4:56—57. Gerpheide seeks to‘solve the problem of reducing electrical
`
`interference in single point touch pads that use measurements of true
`
`capacitance to determine location. Id. at 2:21—34. To reduce electrical
`
`interference regardless of its fiequency, Gerpheide varies the oscillator
`
`signal frequency provided to the touch pad. Id. at Figs. 4, 7, 3:13—18, 6:5—8,
`
`6:19—26, 8:22—9:33. More specifically, Gerpheide describes varying
`
`frequencies in a lookup table, selecting a frequency, sending that frequency
`
`to the entire touchpad thirty-two times in succession, and then selecting a
`
`new frequency based on an electrical interference measure. Id. at 9: 1 8—33.
`4.
`Rationalefor Combining Ingraham I, Gerpheide, and.
`Caldwell
`
`With respect to independent claim 40, Petitioner asserts the
`
`combination of Ingraham 1’s microcomputer using Caldwell’s
`
`sequential scanning to selectively provide each_of Gerpheide’s signal
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`14
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`IPR2016—00908
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`Patent 5,796,183
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`output frequencies as meeting the claimed “microcontroller
`
`selectively providing signal output frequencies to a plurality of small
`
`sized input touch terminals of a keypad.” Pet. 39. More specifically,
`
`Petitioner contends that Ingraham I’s microcomputer 80 meets the
`
`claimed microcontroller and input portions 13 meet the claimed
`
`“small sized input touch terminals of a keypad.” Id; see also id. at
`
`19—20. Relying on Dr. Subramanian’s testimony, Petitioner contends
`
`that it would have been readily'apparent to one of ordinary skill to
`modify the microcomputer and input portions of Ingraharn 1 given the
`
`teachings of Caldwell such that “rows of input portions 13 would be
`
`selected sequentially and the oscillator signal provided to the selected
`
`row.” Id. at 24 (citing Ex. 1002 11 64; EX. 1009, 6:40—63). According
`
`to Petitioner, a system so modified would selectively provide the
`
`oscillator signal frequency to the input touch terminals of a keypad,
`
`thereby meeting the claimed “selectively providing a signal output
`
`fiequency to each row of the plurality of small sized input touch
`
`terminals of the keypad.” Id. at 26, 39. The same oscillator signal
`
`would be sequentially provided to each row of Ingraham I’s input
`
`portions 13 until all rows are scanned. Id. at 55 (citing Ex. 1009,
`
`6:40—63, 8:20—23; Ex. 1002 11 132).
`
`Petitioner relies on Gerpheide as teaching varying the oscillator
`
`signal frequency provided to an electrode array in order to account for
`
`electrical interference. Id. at 28 (citing Ex. 1012, 6:5—8, 6:19-26,
`
`8:22—9:33, Figs. 4, 7; EX. 1006, 329—30, 333—34). Again relying on
`
`Dr. Subramanian, Petitioner alleges, “one of ordinary skill in the art
`
`would have been motivated to incorporate interference negating
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`IPRZO 16-0090 8
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`Patent 5,796,183
`
`functionality similar to that described by Gerpheide in the above
`
`discussed Ingraham I-Caldwell system.” Id. at 28 (citing Ex. 1002,
`
`1] 72). Thus, Petitioner contends the system of Ingraham I—Caldwell—
`
`Gerpheide selectively provides signal output frequencies, as opposed
`
`to only a single frequency. Id. at 29, 40.
`
`In its Preliminary Response, Patent Owner asserted that one of
`
`ordinary skill in the art would not be motivated to combine the
`
`teachings of Gerpheide With those of Ingraham I and Caldwell.
`
`According to Patent Owner, “Gerpheide is single touch and therefore
`
`is concerned about sensing the entire single touch pad, it does not
`
`sense any individual rows or seek to determine interference between
`
`multiple touch pads.” Prelim. Resp. 44. Patent Owner’s witness,
`
`Dr. Cairns, testified that Dr. Subramanian’s testimony on this point is
`
`erroneous because Gerpheide “is a single touch device that could not
`
`be combined with either [cited reference] to make a working device.”
`
`Ex 2002 1! 102.
`
`In our Decision on Institution, we determined Dr. Cairns”
`
`testimony conflicted directly with Dr. Subramanian’s testimony on
`
`this issue. Dec. on Inst. 23. We, therefore, resolved in Petitioner’s
`favor at that stage ofthe proceeding the genuine issue ofmaterial fact
`
`as to whether one of ordinary skill in the art would have looked to
`
`Gerpheide to combine its teaching of selectively providing
`
`frequencies with Ingraham I and Caldwell. Id. (citing 37 C.F.R
`
`§ 42.108(c)).
`
`Having completed trial in the matter, Petitioner must show by a
`
`preponderance of the evidence that a person of ordinary skill in the art
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`(1
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`would have been motivated to combine Gerpheide with Ingraham I
`
`and Caldwell with a reasonable expectation of success. We determine
`
`Petitioner has failed to carry this burden for the reasons that follow.
`
`Reasons to Combine Ingraham I, Gerpheide, and
`a)
`Caldwell
`
`During trial, Patent Owner argues that an artisan of ordinary
`skill would not look to Gerpheide when addressing the problem faced
`
`by the ’183 patent because Gerpheide “does not disclose a keypad, is
`
`not compatible with keypads, and was directed to reducing electrical
`
`interference on a single-point touchpad.” PO Resp. 23 (citing EX.
`2010 1111 96—106). Patent Owner and Dr. Cairns direct ouriattention to
`additional reference US. Patent No. 4,639,720 (“Rympalski”),1 which
`
`disparages single point touch pads because they “suffer from a lack of
`
`versatility (they are capable of locating only one coordinate point at a
`
`time) and'consume considerable power and involve complex
`
`hardware, thereby reducing their cost effectiveness and practical
`
`utility.” Id. at 24 (citing Ex. 2012, 227—17; Ex. 2010 1111 96—101).
`
`Petitioner replies that a person of skill in the art would be
`
`motivated to combine Gerpheide with Ingraham I and Caldwell
`
`because Gerpheide addresses capacitive touch responsive systems.
`
`Reply 5—6 (citing EX.1002 1111 70—71). Petitioner contends that Patent
`
`Owner’s reliance on Rympalski is misplaced because Rympalski “was
`
`filed in 1981, more than a decade before Gerpheide’s filing date.” Id.
`
`at 6—7 (citing Ex.1017 1111 5—6). Petitioner reiterates that, according to
`
`1 Dr. Cairns identifies that Gerpheide cites US. Patent No. 5,305,017
`(“Gerpheide ’017”), which in turn cites Rympalski. EX. 2010 11 98.
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`17
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`Patent 5,796,183
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`Dr. Subramanian, an ordinarily skilled artisan would have looked to
`
`Gerpheide “for its teachings regarding electrical interference
`
`nullification in touch systems by measuring interference and adjusting
`
`the oscillator output frequency based on the measured interference.”
`
`Id. (citing Pet. 27—29; EX. 1002 {HI 69—72). Petitioner states, “a‘
`
`POSITA would have looked to the inter-related'teachings of all three
`
`references regardless of whether they are single-point touch pads or
`
`not to create a capacitive touch responsive system given the
`
`advantages of the combined Ingraham I—Caldwell-Gerpheide system.”
`
`Id. at 8 (citing EX. 1002 W 61, 65, 66, 70, 72; Ex. 1017 1] 8).
`
`On this evidentiary record, we are not persuaded one of
`
`ordinary skill in the art would have combined Gerpheide with
`
`Ingraham I and Caldwell to arrive at claim 40. Gerpheide is related to
`
`a single point input device, such as those used to provide data input in
`lieu ofa mouse or stylus. Ex. 1012, 1:10—14, 1:19—20, 2:61—3:12.
`
`Like the ’ 183 patent, Ingraham I and Caldwell disclose capacitive
`
`response keypads. Ex. 1007. 1:5—9, 2:19—20; Ex. 1009, 1:6—9, 1:42—
`
`44, 2:45—48. The ’183 patent describes monitoring electrical
`
`interference across a single electrode and varying the frequency of an
`
`oscillator frequency based on an interference measurement. EX. 1001,
`
`6:13—18, 8:22—9:33. Conversely, the ’183 patent describes “a
`
`multiple touch pad circuit” including “an array of touch circuits.” Id.
`
`at 18:34—46. The ’183 patent seeks to overcome the problem of
`
`unintended actuation of these touch circuits when such circuits are
`
`placed in dense arrays. Id. at 3:65—43. Recognizing guard rings and
`
`sensitivity adjustments “have gone a considerable way in allowing
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`18
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`[PRZO 1 6-00908
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`Patent 5,796,183
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`touch switches to be spaced in comparatively close proximity,” the
`
`’183 patent addresses the remaining problem of surface contamination
`across the keypad. Id. at 4: 14—18. The considerations described in
`
`the ’ 183 patent, Ingraham I, and Caldwell related to the close
`
`proximity of touch circuits in a keypad are Wholly absent from
`
`Gerpheide.
`
`Petitioner relies on Dr. Subramanian’s testimony that an
`
`ordinarily skilled artisan would have looked to Gerpheide “for its
`
`teachings regarding electrical in
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