IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Byron Hourmand
`In re Patent of:
`5,796,183 Atty. Docket No.: 39521-0062IP3
`U.S. Patent No.:
`August 18, 1998
`
`Issue Date:
`Appl. Serial No.: 08/601,268
`
`Filing Date:
`January 31, 1996
`
`Title:
`CAPACITIVE RESPONSIVE ELECTRONIC SWITCHING
`CIRCUIT
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 5,796,183 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`SUMMARY OF THE ’183 PATENT ............................................................. 1 
`A.  Brief Description ....................................................................................... 1 
`REQUIREMENTS FOR IPR .......................................................................... 2 
`A.  Grounds for Standing ................................................................................ 2 
`B.  Challenge and Relief Requested ............................................................... 2 
`1.  Discretion under 35 U.S.C. § 314(a) ............................................... 4 
`C.  Level of Ordinary Skill in the Art ............................................................. 6 
`D.  Claim Construction ................................................................................... 7 
`1. 
`“providing signal output frequencies” (claims 61, 94) ................... 7 
`2. 
`“supply voltage” (claims 61, 94) ..................................................... 9 
`3. 
`“coupled” (claims 61, 94) .............................................................. 10 
`III.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 12 
`A.  [GROUND 1A] – Claims 61-63, 66, 93, 94, 96, and 104 are obvious
`over Caldwell, Ingraham, and Redmayne .............................................. 12 
`1. 
`Caldwell ......................................................................................... 12 
`2. 
`Ingraham ........................................................................................ 13 
`3. 
`Combination of Caldwell and Ingraham ....................................... 15 
`4. 
`Reasons to combine Caldwell and Ingraham ................................ 18 
`5. 
`Redmayne ...................................................................................... 21 
`6. 
`Combination of Caldwell, Ingraham, and Redmayne ................... 22 
`7. 
`Reasons to combine Caldwell and Ingraham with Redmayne ...... 22 
`B.  [GROUND 1B] – Claims 64, 90, and 101 are obvious over Caldwell,
`Ingraham, Redmayne, and Schwarzbach ................................................ 69 
`1. 
`Schwarzbach .................................................................................. 69 
`2. 
`Combination of Caldwell, Ingraham, Redmayne, and
`Schwarzbach .................................................................................. 70 
`Reasons to combine Caldwell, Ingraham, Redmayne, and
`Schwarzbach .................................................................................. 70 
`C.  [GROUND 1C] – Claims 65, 91, and 102 are obvious over Caldwell,
`Ingraham, Redmayne, and Ingraham ’548 ............................................. 72 
`1. 
`Ingraham ’548 ............................................................................... 72 
`2. 
`Combination of Caldwell, Ingraham, Redmayne, and Ingraham
`’548 ................................................................................................ 73 
`Reasons to combine Caldwell, Ingraham, Redmayne, and
`Ingraham ’548 ............................................................................... 73 
`D.  [GROUND 1D] – Claims 67-69, and 97-99 are obvious over Caldwell,
`Ingraham, Redmayne, and Meadows ...................................................... 75 
`
`3. 
`
`3. 
`
`i
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`1.  Meadows ....................................................................................... 75 
`2. 
`Combination of Caldwell, Ingraham, Redmayne, and Meadows . 76 
`3. 
`Reasons to combine Caldwell, Ingraham, Redmayne and
`Meadows ....................................................................................... 78 
`IV.  FEES .............................................................................................................. 81 
`V. 
`CONCLUSION .............................................................................................. 81 
`VI.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 82 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 82 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 82 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 82 
`D.  Service Information ................................................................................ 82 
`
`
`
`ii
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`EXHIBITS
`
`U.S. Patent No. 5,796,183 to Hourmand (“the ’183 patent”)
`
`Excerpts from the Prosecution History of the ’183 Patent (“the
`Prosecution History”)
`
`APPLE-1001
`
`APPLE-1002
`
`APPLE-1003
`
`Declaration of Dr. Phillip Wright
`
`APPLE-1004
`
`U.S. Patent No. 5,572,205 to Caldwell (“Caldwell”)
`
`APPLE-1005
`
`U.S. Patent No. 4,561,002 to Chiu (“Chiu”)
`
`APPLE-1006
`
`Prosecution History of Reexamination Control No. 90/012,439
`
`APPLE-1007
`
`Prosecution History of Reexamination Control No. 90/013,106
`
`APPLE-1008
`
`Reserved
`
`APPLE-1009
`
`U.S. Patent No. 4,878,107 to Hopper (“Hopper”)
`
`APPLE-1010
`
`U.S. Patent No. 5,341,036 to Wheeler (“Wheeler”)
`
`APPLE-1011
`
`U.S. Patent No. 4,237,421 to Waldron (“Waldron”)
`
`APPLE-1012
`
`U.S. Patent No. 5,650,597 to Redmayne (“Redmayne”)
`
`APPLE-1013
`
`U.S. Patent No. 4,922,061 to Meadows (“Meadows”)
`
`APPLE-1014
`
`U.S. Patent No. 4,418,333 to Schwarzbach (“Schwarzbach”)
`
`APPLE-1015
`
`U.S. Patent No. 4,293,734 to Pepper (“Pepper”)
`
`APPLE-1016
`
`U.S. Patent No. 4,731,548 to Ingraham (“Ingraham ’548”)
`
`APPLE-1017
`
`U.S. Patent No. 4,758,735 to Ingraham (“Ingraham”)
`
`APPLE-1018
`
`U.S. Patent No. 5,189,417 to Caldwell (“Caldwell ’417”)
`
`iii
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`U.S. Patent No. 4,308,443 to Tucker (“Tucker”)
`
`APPLE-1019
`
`APPLE-1020
`
`U.S. Patent No. 4,290,061 to Serrano (“Serrano”)
`
`APPLE-1021
`
`U.S. Patent No. 4,845,630 to Stephens (“Stephens”)
`
`APPLE-1022
`
`U.S. Patent No. 5,048,019 to Albertsen (“Albertsen”)
`
`APPLE-1023
`
`U.S. Patent No. 5,632,039 to Walker (“Walker”)
`
`APPLE-1024
`
`U.S. Patent No. 5,508,653 to Chu (“Chu”)
`
`APPLE-1025
`
`U.S. Patent No. 5,087,825 to Ingraham (“Ingraham ’825”)
`
`APPLE-1026
`
`U.S. Patent No. 4,649,323 to Pearlman (“Pearlman”)
`
`APPLE-1027
`
`U.S. Patent No. 5,311,392 to Kinney (“Kinney”)
`
`APPLE-1028
`
`U.S. Patent No. 4,707,852 to Jahr (“Jahr”)
`
`APPLE-1029
`
`U.S. Patent No. 5,638,444 to Chou (“Chou”)
`
`APPLE-1030
`
`U.S. Patent No. 5,063,383 to Bobba (“Bobba”)
`
`APPLE-1031
`
`U.S. Patent No. 4,903,251 to Chapman (“Chapman”)
`
`iv
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 61-69, 90-91, 93-94, 96-99, 101-102 and 104 (“the Challenged
`
`Claims”) of U.S. Patent No. 5,796,183 (“the ’183 patent”).
`
`I.
`
`SUMMARY OF THE ’183 PATENT
`A. Brief Description
`The ’183 patent relates to a capacitive responsive electronic switching
`
`circuit. APPLE-1001, Abstract. As shown in Figure 4, the circuit includes
`
`oscillator 200 (shown in blue) providing a periodic output signal, input touch
`
`terminal 450 (green) for an operator to provide an input by proximity or touch, and
`
`touch circuit 400 (orange) that provides a detection signal to microcontroller 500
`
`(yellow) that receives the output signal from the oscillator. Id., FIG. 4, 7:22-24,
`
`12:6-28; APPLE-1003, [27]-[34] (“Technology Overview”).
`
`1
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`APPLE-1001, FIG. 4 (annotated)
`
`
`
`II. REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Apple certifies that the ’183 Patent is available for IPR. The present petition
`
`is being filed within one year of service of a complaint against Apple on November
`
`29, 2017 in the Eastern District of Michigan. Apple is not barred or estopped from
`
`requesting this review on the grounds identified below.
`
`B. Challenge and Relief Requested
`Apple requests IPR of the Challenged Claims on the following grounds:
`
`2
`
`

`

`Claims
`61-63, 66, 93, 94,
`96, 104
`64, 90, 101
`
`65, 91, 102
`
`67-69, 97-99
`
`Ground
`1A
`
`1B
`
`1C
`
`1D
`
`
`
`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`§ 103 Basis
`Obvious over Caldwell, Ingraham, and
`Redmayne
`Obvious over Caldwell, Ingraham,
`Redmayne, and Schwarzbach
`Obvious over Caldwell, Ingraham,
`Redmayne, and Ingraham ’548
`Obvious over Caldwell, Ingraham,
`Redmayne, and Meadows
`
`The earliest priority date of the ’183 patent is January 31, 1996 (the “Critical
`
`Date”). APPLE-1002. The ’183 patent was subject to a previous IPR challenge
`
`filed by Samsung. Samsung v. UUSI, IPR2016-00908, Paper 2 (PTAB April 15,
`
`2016).
`
`The cited references are prior art as shown:
`
`Reference
`Caldwell (APPLE-1004)
`Redmayne (APPLE-1012)
`Meadows (APPLE-1013)
`Schwarzbach (APPLE-1014)
`Ingraham ’548 (APPLE-1016)
`Ingraham (APPLE-1017)
`
`
`35 U.S.C. §
`102(e)
`102(e)
`102(b)
`102(b)
`102(b)
`102(b)
`
`Qualifying date
`03/29/1993 (filed)
`01/20/1995 (filed)
`05/01/1990 (issued)
`11/29/1983 (issued)
`03/05/1988 (issued)
`07/19/1988 (issued)
`
`Caldwell, Ingraham, and Ingraham ’548 were listed in an IDS during
`
`prosecution of the ’183 patent, but not relied on during that prosecution nor during
`
`subsequent Patent Owner-initiated reexamination. APPLE-1001, Face; APPLE-
`
`3
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`1002, 302, 307; APPLE-1006; APPLE-1007. The remaining references were not
`
`considered.
`
`Caldwell, Ingraham, and Ingraham ’548 are the only references that were
`
`relied on by Samsung in the prior IPR. Samsung v. UUSI, Paper 2. However, this
`
`Petition relies on different disclosures from these references, and presents them in
`
`a different light.
`
`For example, this Petition relies on Caldwell as a primary reference, while
`
`the Samsung IPR used Caldwell merely “to corroborate that one skilled in the art
`
`would have had the knowledge and capability to implement” its proposed
`
`combination, and not to “disclose any of the features of the challenged claims.”
`
`Samsung v. UUSI, Paper 2, 45, note 13.
`
`The Samsung IPR relied on Ingraham and Ingraham ’548 throughout, but
`
`did not rely on these references for the claim features to which they are mapped in
`
`this Petition. Section III, [61h] (relying on Ingraham for “presence of an operator's
`
`body capacitance to ground coupled to said touch terminals”); [65a] (relying on
`
`Ingraham ’548 for “a voltage regulator supply voltage”).
`
`1.
`Discretion under 35 U.S.C. § 314(a)
`The Board has discretion “to deny a petition that challenges a patent that was
`
`previously challenged before the Board.” Shenzhen Silver Star Intelligent Tech. v.
`
`iRobot, IPR2018-00898, Paper 9, 6 (10/01/2018); Gen. Plastic Indus. v. Canon
`
`4
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`Kabushiki Kaisha, IPR2016-01360, Paper 19, 8 (09/06/2017). The Board has
`
`provided a non-exhaustive list of factors it considers when determining whether to
`
`apply this discretion. Gen. Plastic, Paper 19, 16. These factors weigh heavily
`
`against denial because any delay in Apple’s IPR relative Samsung’s IPR was
`
`caused by Patent Owner’s delay in bringing suit against Apple. Patent Owner
`
`waited over two years and until after the Samsung IPR concluded before suing
`
`Apple. Under these circumstances, rewarding Patent Owner’s delay and denying
`
`this petition for discretionary reasons would be unfair to Apple.
`
`Specifically, the first General Plastic factor weighs against denial, because
`
`Apple has not filed any previous petition challenging the ’183 patent. Gen.
`
`Plastic, Paper 19, 16. The second factor also weighs against denial, because Apple
`
`did not know of any of the prior art references relied on in this Petition when
`
`Samsung filed its IPR and, because Apple had not been sued, had no reason to
`
`identify prior art applicable to the ’183 patent at that time. Gen. Plastic, Paper 19,
`
`16.
`
`The fourth General Plastic factor also weighs against denial, because the
`
`prior art relied on in this Petition was identified by prior art searching and review
`
`that was not conducted (and that Apple had no reason to conduct) until after suit
`
`was filed against Apple and the Samsung IPR had concluded. Gen. Plastic, Paper
`
`19, 16.
`
`5
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`In addition, the fifth General Plastic factor weighs against denial, because
`
`any delay between Samsung’s IPR and this IPR was due to Patent Owner’s delay
`
`in filing suit against Apple. Gen. Plastic, Paper 19, 16.
`
`The sixth and seventh factors either favor institution or are at worst neutral.
`
`Gen. Plastic, Paper 19, 16.
`
`Further, in Shenzhen, the Board considered “the extent to which the
`
`petitioner and any prior petitioner(s) were similarly situated defendants.”
`
`Shenzhen, Paper 9, 7. The “purpose” of this factor “is to discourage tactical filing
`
`of petitions over time by parties that faced the same threat at the same time.” Id.,
`
`14.1 Here, Apple did not face “the same threat at the same time” as Samsung
`
`because Patent Owner waited to sue Apple over two years after it filed suit against
`
`Samsung and over a month after the Samsung IPR concluded.
`
`Because these factors weigh against denial, the Board should not exercise its
`
`discretion to deny institution.
`
`C. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art as of the Critical Date of the ’183 patent
`
`(hereinafter a “POSITA”) would have had at least a Bachelor of Science degree in
`
`electrical engineering or a related technical field, and two or more years of
`
`
`1 All emphasis added unless otherwise indicated.
`
`6
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`experience in electrical circuits and sensor systems. APPLE-1003, [22]; APPLE-
`
`1001, (Background).
`
`D. Claim Construction
`Petitioner proposes construction of the terms below. The remaining terms
`
`do not require construction. Vivid Techs. v. Am. Sci. & Eng’g, 200 F.3d 795, 803
`
`(Fed. Cir. 1999)(only claim terms in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy). Petitioner reserves the right to
`
`respond to any constructions offered by Patent Owner or adopted by the Board.
`
`Petitioner is not waiving any arguments concerning indefiniteness or claim scope
`
`that may be raised in litigation.
`
`1.
`“providing signal output frequencies” (claims 61, 94)
`Claim 61 recites “the microcontroller selectively providing signal output
`
`frequencies to a plurality of small sized input touch terminals of a keypad.” Claim
`
`66, which depends from 61, states that “each signal output frequency selectively
`
`provided to each row of the plurality of small sized input touch terminals of the
`
`keypad has a same hertz value.” Because it is a dependent claim, claim 66 further
`
`limits the claim from which it depends and independent claim 61 must be
`
`interpreted to encompass the scope of claim 66. Thus, “providing signal output
`
`frequencies” in claim 61 must be interpreted to encompass the situation where
`
`“each signal output frequency” of the provided signal output frequencies “has the
`
`7
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`same hertz value.” 37 C.F.R. 1.75(c).
`
`In addition, a POSITA would have understood that two frequencies that
`
`have “the same hertz value” are the same frequency. APPLE-1003, [59]. Thus,
`
`the claimed “signal output frequencies” can be the same, and need not be different
`
`frequencies. Id.
`
`Similarly, claim 67 which depends from claim 61, states that “each signal
`
`output frequency selectively provided to each row of the plurality of small sized
`
`input touch terminals of the keypad is selected from a plurality of hertz values.”
`
`Thus, “providing signal output frequencies” in claim 61 must also be interpreted to
`
`encompass selection of each frequency from a plurality of hertz values.
`
`As claims 66 and 67 confirm, the limitation “providing signal output
`
`frequencies” in claim 61 should be construed to include “providing signal output
`
`frequencies, wherein each signal output frequency has a same hertz value or is
`
`selected from a plurality of hertz values.” APPLE-1003, [58]-[61].
`
`Claim 94 also recites “providing signal output frequencies.” Because there
`
`is no indication that this identical claim language should have a different meaning
`
`in these claims, “providing signal output frequencies” in claim 94 should be
`
`construed consistent with the identical language in claim 61. Pods, Inc. v. Porta
`
`Stor, Inc., 484 F. 3d 1359 (Fed. Cir. 2007); APPLE-1003, [62].
`
`8
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`2.
`“supply voltage” (claims 61, 94)
`Claims 61 and 94 recite “wherein a peak voltage of the signal output
`
`frequencies is greater than a supply voltage.” The recitation of “a supply voltage”
`
`in these claims is properly construed to be a supply voltage of the microcontroller,
`
`as opposed to a supply voltage for another component in the touch circuit.
`
`The placement of the term within a wherein clause describing the
`
`microcontroller supports this interpretation. APPLE-1001, claims 61, 94. In
`
`addition, the supply voltage being compared to the “signal output frequencies”
`
`provided by the microcontroller in claims 61 and 94 is indicative that the recited
`
`supply voltage is a supply voltage of the microcontroller. APPLE-1001, claim 94;
`
`APPLE-1003, [63]-[64].
`
`In the previous IPR, the Board determined: “based on the context of the
`
`supply voltage limitations in [claims 61 and 94], that one of ordinary skill in the art
`
`would understand the term ‘supply voltage’ as referring to a supply voltage of the
`
`claimed microcontroller.” Samsung v. UUSI, IPR2016-00908, Paper 12, 10. The
`
`Board found that the term’s inclusion within a claim limitation reciting “a
`
`microcontroller” meant that the recited “supply voltage” referred to a supply
`
`voltage of the microcontroller rather than to some other circuit component (such as
`
`the oscillator). Id.
`
`Accordingly, the term “a supply voltage” in claims 61 and 94 should be
`
`9
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`construed to mean “a supply voltage of the microcontroller.” APPLE-1003, [63]-
`
`[66].
`
`3.
`“coupled” (claims 61, 94)
`Claims 61 and 94 recite various components “coupled” to other components.
`
`For example, claim 61 recites “a detector circuit coupled to said oscillator.” The
`
`’183 patent discloses that such coupling may be direct (e.g., two components
`
`connected by a wire) or indirect (e.g., two components connected by a path
`
`through multiple other components).
`
`For example, the ’183 patent describes that “[o]scillator 1200 is preferably
`
`comprised of a first invertor gate 1210 having [its] input coupled to [its] output via
`
`resistors 1214 and 1216[.]” APPLE-1001, 20:6-8. FIG. 13 shows this
`
`configuration:
`
`10
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`
`
`APPLE-1001, FIG. 13 (annotated)
`
`The ’183 patent includes several other examples of indirect coupling
`
`between components. APPLE-1001, 12:60-62, 13:46-48.
`
`Accordingly, the term “coupled” should be construed to include indirect
`
`coupling via intervening components. APPLE-1003, [67]-[70].
`
`11
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`[GROUND 1A] – Claims 61-63, 66, 93, 94, 96, and 104 are
`obvious over Caldwell, Ingraham, and Redmayne
`1.
`Caldwell
`Caldwell teaches a “touch control system that is responsive to a user input
`
`selection” that “includes an electrically non-conducting substrate, such as glass
`
`ceramic, and at least one capacitive-responsive touchpad on the substrate.”
`
`APPLE-1004, Abstract. Caldwell’s “high frequency line driver 32” (an oscillator)
`
`produces a “source signal having a primary frequency that is greater than 150 kHz
`
`… [and] applied to one portion of the touchpad.” Id. “The touchpad couples the
`
`electrical signal to another portion of the touchpad in order to develop a detection
`
`signal, which is decoded in order to determine the presence of the capacitance of a
`
`user.” Id.
`
`In Caldwell, “[e]ach touch pad 14 includes a first portion composed of an
`
`electrically conducting element 16a” (a first electrode) “and a second portion
`
`composed of an electrically conducting element 16b” (a second electrode) “affixed
`
`to a surface 18 of substrate 12” and “a user contact pad 20” (a third electrode)
`
`“overlying the conductive elements 16a and 16b.” Id., 3:60-66; APPLE-1003, [72-
`
`73]. FIG. 2 shows example touch pad 14. APPLE-1003, [71]-[72].
`
`12
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`APPLE-1004, FIG. 2 (annotated)
`
`
`
`2.
`Ingraham
`Ingraham is emblematic of well-known prior art touch sensors described in
`
`the “Background” of the ’183, which cites “U.S. Pat. No. 4,758,735” (Ingraham) as
`
`disclosing “capacitive touch switches” that rely “on the change in capacitive
`
`coupling between a touch terminal and ground” in which “the operator need not
`
`come in conductive contact with the touch terminal but rather only in close
`
`proximity to it” for detection to occur. APPLE-1001, 3:44-63. The ’183 patent
`
`13
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`states that the “specific touch detection method” it describes “has similarities to the
`
`devices of” Ingraham. APPLE-1001, 5:43-44.
`
`In particular, Ingraham’s “touch controlled electrical switching circuit”
`
`includes an “oscillator circuit” producing a “square wave” detection signal.
`
`APPLE-1017, 2:21-25. A “touch plate 15 ... made of an electrically conductive
`
`material” (i.e., an electrode) is “electrically coupled” to the path of the detection
`
`signal. Id., 2:9-15. The “oscillator ... applies” the detection “signal to [the] touch
`
`plate [15].” Id., 1:42-44. When “a person touches plate 15,” the voltage of the
`
`detection signal is decreased by the introduction of the person’s “body
`
`capacitance” to ground. Id., 2:56-58. This decrease in voltage is measured by a
`
`“detector circuit” coupled to touch plate 15 to detect a touch input. APPLE-1017,
`
`1:42-44, claim 8, FIG. 1; APPLE-1003, [73]-[75]. FIG. 1 from Ingraham shows
`
`touch plate 15 being touched by a person, thereby introducing body capacitance to
`
`ground (11, 14):
`
`14
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`APPLE-1017, FIG. 1 (annotated)
`
`
`
`In Ingraham, “it is not necessary for the operator to actually touch the
`
`electrically conductive plate 15 but only come sufficiently close to add the body
`
`capacitance 14” to the circuit to detect a touch input. Id., 2:15-18.
`
`3.
`Combination of Caldwell and Ingraham
`In the combination, Ingraham’s touch plate 15 replaces each touch pad 14 of
`
`Caldwell including “conductive elements 16a and 16b” and “user contact pad 20.”
`
`APPLE-1004, 3:60-66, FIG. 2; APPLE-1017, 2:9-15, 2:56-58, FIG. 1; APPLE-
`
`1003, [76]. Caldwell’s FIG. 5 shows this configuration:
`
`15
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`
`APPLE-1004, FIG. 5 (annotated)
`
`
`
`As shown, Ingraham’s touch plate 15 is connected to Caldwell’s drive lines
`
`52a-52c and receives the detection signal from high frequency line driver 46.
`
`APPLE-1003, [77]. Touch plate 15 also connects through sense lines 54a-54d to
`
`Caldwell’s detector circuit. Id.
`
`16
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`In Ingraham, introduction of a user’s body capacitance to ground at one of
`
`the touch plates lowers the voltage of the signal provided to the detector circuit.
`
`APPLE-1017, 2:56-58. Thus, the impact on the signal coming out of Caldwell’s
`
`touch pad 14 when it is touched (i.e., Caldwell’s oscillator signal with a lowered
`
`voltage) is the same as the impact on the signal coming out of Ingraham’s touch
`
`plate 15 when it is touched (i.e., Ingraham’s oscillator signal with a lowered
`
`voltage). APPLE-1004, 2:21-25, 2:65-66, 4:65-5:2; APPLE-1017, 2:56-58.
`
`Accordingly, introduction of a user’s body capacitance to ground at one of
`
`Ingraham’s touch plates 15 lowers the voltage of the signal provided from
`
`Caldwell’s high frequency line driver 46 to that touch plate. Id.
`
`Because the impact on the signal is the same with the substitution of
`
`Ingraham’s touch plates 15, Caldwell’s detector circuit detects this decrease in
`
`voltage in the same way it detects the decrease in voltage caused by a user
`
`touching Caldwell’s touch pad 14. APPLE-1004, 2:21-25. A POSITA would have
`
`understood that a user touching one of Ingraham’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. As Dr. Wright explains, a POSITA would have been
`
`readily able to address this potential difference by recalibrating the threshold
`
`voltage of Caldwell’s detector circuit. APPLE-1003, [78]-[79]; APPLE-1001
`
`(Background section), 4:8-10 (known to “adjust the detection sensitivity by
`
`17
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`adjusting the threshold voltage to which the sensed voltage is compared”). 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. Id.
`
`Accordingly, the combination involves a simple substitution of one type of
`
`known touch pad (Caldwell’s touch pad 14) with another (Ingraham’s touch plate
`
`15). In the combination, a POSITA would have known (1) to substitute each touch
`
`pad 14 of Caldwell with a touch plate 15 of Ingraham, (2) to apply Caldwell’s high
`
`frequency line driver 46 to the touch plates 15, and (3) to adjust the threshold used
`
`in Caldwell’s detector circuit as needed. Caldwell’s detector circuit would then
`
`operate as described in Caldwell to detect proximity or touch at touch plates 15.
`
`APPLE-1003, [80].
`
`4.
`Reasons to combine Caldwell and Ingraham
`A POSITA would have been motivated to substitute Ingraham’s touch plates
`
`for Caldwell’s touch pads to obtain several advantages of Ingraham’s touch sensor
`
`configuration. For example, a POSITA would have understood that incorporating
`
`Ingraham’s touch plate would have provided improved proximity detection (for
`
`example, proximity detection at a greater effective range, and at a higher signal-
`
`noise ratio) compared to Caldwell alone. APPLE-1003, [81]. Indeed, the ’183
`
`patent itself recognizes that Ingraham has the advantage that an “operator need not
`
`18
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`come in conductive contact with the touch terminal but rather only in close
`
`proximity to it.” APPLE-1001, 3:56-59 (a “major advantage” of Ingraham);
`
`APPLE-1017, 2:15-20, 2:48-52. A POSITA would have recognized that this
`
`advantage would have made Caldwell’s keypad more responsive to user input,
`
`thereby making it easier for an operator to use under a variety of conditions.
`
`APPLE-1003, [81].
`
`In addition, Ingraham’s touch plate requires fewer electrodes than
`
`Caldwell’s. Compare APPLE-1017, 2:11-15, FIG. 1 (a single electrically-
`
`conductive “touch plate 15”) to APPLE-1004, 3:64-66, FIG. 4 (two “conductive
`
`elements 16a and 16b” and a “user contact pad 20”); APPLE-1017, 3:55-58;
`
`APPLE-1015, 8:55-56; APPLE-1009, 3:9-23. This simplification of the touch pad
`
`circuit would have led to a reduction in the manufacturing cost of the touch circuit
`
`(two electrodes are eliminated from each touch pad), which also would have
`
`motivated a POSITA to perform the modification. Id.; APPLE-1003, [82]
`
`Although the ’183 patent describes potential issues related to using multiple
`
`touch pads of the type described in Ingraham “placed in close proximity” to one
`
`another, such as susceptibility to the effects of contaminants on the surface of the
`
`touch pads, the techniques of Caldwell address this issue. APPLE-1001, 4:18-27;
`
`APPLE-1004, 5:15-18. Specifically, using oscillator “frequencies of 150 kHz and
`
`above” in Caldwell’s touch circuit provides “increased immunity to cross-coupling
`
`19
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`between adjacent” touch pads “due to liquids, such as water, on substrate 12.”
`
`APPLE-1004, 5:15-18; APPLE-1001, 5:49-53 (describing an approach similar to
`
`Caldwell’s for “minimiz[ing] the effects of surface contamination”); APPLE-1003,
`
`[83]. As Dr. Wright explains, a POSITA would have seen Ingraham’s touch plates
`
`15 as suitable for operation at the frequencies and voltage levels used in Caldwell’s
`
`touch circuit, and a POSITA would have retained these frequencies and voltage
`
`levels in the combination to retain Caldwell’s benefits of improved contaminant
`
`performance. Id.2
`
`The results of the combination would have been predictable because sensors
`
`detecting a user’s body capacitance to ground (e.g., Ingraham’s sensors) were
`
`widely used in touch sensing circuits like Caldwell’s. APPLE-1003, [84]; APPLE-
`
`1017, 2:15-20, 3:55-58; APPLE-1001, 3:44-59; APPLE-1025, 3:30-37, FIG. 1;
`
`APPLE-1016, 2:33-42, FIG. 1. Indeed, the ’183 patent describes several such
`
`touch sensing circuits in its “Background” section, including Ingraham’s touch
`
`circuit. APPLE-1001, 3:44-63. As recognized in the ’183 patent’s “Background”
`
`
`2 The ’183 patent describes Ingraham’s circuit as operating at a higher
`
`voltage. APPLE-1001, 6:8-13. However, Ingraham does not describe a particular
`
`supply or peak voltage for its circuit, and its touch plate 15 would have been
`
`responsive to Caldwell’s voltage levels. APPLE-1017; APPLE-1003, [84].
`
`20
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`section, Ingraham’s technique is one of a limited number of known
`
`“methodologies” for achieving “capacitive touch switches.” APPLE-1001, 3:12-
`
`63. With this background, and in addition to the motivations discussed above, a
`
`POSITA would have seen Ingraham’s touch plates 15 as being obvious to try in
`
`Caldwell and representing a simple substitution of one known element (Caldwell’s
`
`touch pads 14) for another (Ingraham’s touch plates 15) to obtain predictable
`
`results. APPLE-1003, [84].
`
`Finally, a POSITA would have understood that Caldwell’s touch circuit
`
`would continue to function in substantially the same fashion with Ingraham’s touch
`
`plate 15 substituted for touch pads 14. APPLE-1003, [85]. Any recalibration of
`
`Caldwell’s detector circuit to compensate for differences in signal change between
`
`Ingraham’s touch plate 15 and Caldwell’s touch pads 14 would have been routine
`
`and predictable for a POSITA to implement. Id.; APPLE-1001 (Background
`
`section), 4:8-10. Thus, a POSITA would have had ample reasons to combine
`
`Ingraham with Caldwell in the manner proposed and would have had a reasonable
`
`expectation of success. APPLE-1003, [85].
`
`5.
`Redmayne
`Redmayne teaches “a capacitive touch sensor” array including “[f]ixed
`
`circuit 27” that “includes a power supply 30, an oscillator 32, [and] a processor 34”
`
`(a microcontroller). APPLE-1012, Abstract, 4:28-29. Redmayne’s “[f]ixed circuit
`
`21
`
`

`

`Attorney Docket No. 39521-0062IP3
`IPR of U.S. Patent No. 5,796,183
`27 is powered by power supply 30 which provides a VCC voltage level … at +5 V
`
`for fixed circuit 27.” Id., 4:37-40. Redmayne’s supply voltage for the processor,
`
`which is part of fixed circuit 27, is 5 volts. Id., 4:28-40; APPLE-1003, [86].