UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UUSI, LLC d/b/a NARTRON,
`Patent Owner
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`Case No. IPR2019-00358
`Patent No. 5,796,183
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`I.
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`II.
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`Case No. IPR2019-00358
`Attorney Docket No: 39521-0062IP4
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
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`Claim Construction .......................................................................................... 1
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`A.
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`B.
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`C.
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`The Board’s construction of “selectively providing signal output
`frequencies” is correct ........................................................................... 1
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`The Samsung Appeal is not “binding precedent” on the Board ........... 2
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`The Samsung Appeal does not expressly construe “selectively
`providing signal output frequencies” .................................................... 3
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`D. UUSI’s construction is inconsistent with the claim language .............. 5
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`E.
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`UUSI’s construction is inconsistent with the ’183 specification .......... 8
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`III. Claims 37, 94, 96, 101, 105, and 106 the combination of Chiu and
`Schwarzbach, and claims 105 and 106 are obvious over Chiu (Ground 1A) .......... 11
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`Claims 105 and 106 are obvious over Chiu and the combination of
`Chiu and Schwarzbach (Ground 1A) .................................................. 11
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`Chiu teaches “selectively providing signal output frequencies”
`(Claims 37, 94, and 105) ..................................................................... 12
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`Chiu teaches “providing a periodic output signal having a predefined
`frequency” (Claims 37, 94, and 105) .................................................. 14
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`Chiu teaches a “closely-spaced array” (Claims 37, 94, and 105) ....... 16
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`A POSITA would have been motivated to combine Chiu and
`Schwarzbach as described in the Petition ........................................... 16
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`Chiu and Schwarzbach teaches that “an oscillator voltage is greater
`than a supply voltage” (Claim 37) ...................................................... 18
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`Chiu and Schwarzbach teach that “a peak voltage of the signal output
`frequencies is greater than a supply voltage” (Claim 94) ................... 21
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`i
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`Case No. IPR2019-00358
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`Chiu and Schwarzbach teach that “the supply voltage is a battery
`supply voltage” (Claim 101) ............................................................... 23
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`H.
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`IV. Chiu, Schwarzbach and Meadows (Ground 1C) ........................................... 24
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`A.
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`B.
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`The Petition’s proposal to “replace” the oscillator of Chiu with the
`oscillator of Meadows does not require physical incorporation ......... 24
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`The Petition sufficiently explains the operation of the combined
`circuit of Chiu, Schwarzbach, and Meadows ...................................... 25
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`V.
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`Chiu, Schwarzbach and Tucker (Ground 1E) ................................................ 27
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`VI. Conclusion ..................................................................................................... 28
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`ii
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`Case No. IPR2019-00358
`Attorney Docket No: 39521-0062IP4
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`EXHIBITS
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`APPLE-1001
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`U.S. Patent No. 5,796,183 to Hourmand (“the ’183 patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’183 Patent (“the
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`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. Phillip Wright
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`APPLE-1004
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`U.S. Patent No. 5,572,205 to Caldwell (“Caldwell”)
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`APPLE-1005
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`U.S. Patent No. 4,561,002 to Chiu (“Chiu”)
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`APPLE-1006
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`Prosecution History of Reexamination Control No. 90/012,439
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`APPLE-1007
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`Prosecution History of Reexamination Control No. 90/013,106
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`APPLE-1008
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`U.S. Patent No. 4,560,954 to Leach (“Leach”)
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`APPLE-1009
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`U.S. Patent No. 4,878,107 to Hopper (“Hopper”)
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`APPLE-1010
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`U.S. Patent No. 5,341,036 to Wheeler (“Wheeler”)
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`APPLE-1011
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`U.S. Patent No. 4,237,421 to Waldron (“Waldron”)
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`APPLE-1012
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`U.S. Patent No. 5,650,597 to Redmayne (“Redmayne”)
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`APPLE-1013
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`U.S. Patent No. 4,922,061 to Meadows (“Meadows”)
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`iii
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`U.S. Patent No. 4,418,333 to Schwarzbach (“Schwarzbach”)
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`APPLE-1014
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`APPLE-1015
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`U.S. Patent No. 4,293,734 to Pepper (“Pepper”)
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`APPLE-1016
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`U.S. Patent No. 4,731,548 to Ingraham (“Ingraham ’548”)
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`APPLE-1017
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`U.S. Patent No. 4,758,735 to Ingraham (“Ingraham ’735”)
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`APPLE-1018
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`U.S. Patent No. 5,189,417 to Caldwell (“Caldwell ’417”)
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`APPLE-1019
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`U.S. Patent No. 4,308,443 to Tucker (“Tucker”)
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`APPLE-1020
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`U.S. Patent No. 4,290,061 to Serrano (“Serrano”)
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`APPLE-1021
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`U.S. Patent No. 4,845,630 to Stephens (“Stephens”)
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`APPLE-1022
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`U.S. Patent No. 5,048,019 to Albertsen (“Albertsen”)
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`APPLE-1023
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`U.S. Patent No. 5,632,039 to Walker (“Walker”)
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`APPLE-1024
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`U.S. Patent No. 5,508,653 to Chu (“Chu”)
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`APPLE-1025
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`U.S. Patent No. 5,087,825 to Ingraham (“Ingraham ’825”)
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`APPLE-1026
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`U.S. Patent No. 4,649,323 to Pearlman (“Pearlman”)
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`APPLE-1027
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`U.S. Patent No. 5,311,392 to Kinney (“Kinney”)
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`APPLE-1028
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`U.S. Patent No. 4,707,852 to Jahr (“Jahr”)
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`Case No. IPR2019-00358
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`U.S. Patent No. 5,638,444 to Chou (“Chou”)
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`APPLE-1029
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`APPLE-1030
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`U.S. Patent No. 5,063,383 to Bobba (“Bobba”)
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`APPLE-1031
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`U.S. Patent No. 4,903,251 to Chapman (“Chapman”)
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`APPLE-1032
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`U.S. Patent No. 4,328,408 (“Lawson”)
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`APPLE-1033
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`Deposition Transcript of Dr. Darran Cairns
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`APPLE-1034
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`Second Declaration of Dr. Phillip Wright
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`v
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`Case No. IPR2019-00358
`Attorney Docket No: 39521-0062IP4
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`Introduction
`In its Patent Owner Response (“POR”), UUSI mischaracterizes the Federal
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`I.
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`Circuit’s decision in Samsung’s appeal of its IPR of the ’183 patent. Samsung
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`Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019) (non-precedential)
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`(hereinafter “Samsung Appeal”). UUSI incorrectly argues that the non-
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`precedential Samsung Appeal is binding on the Board in the present proceeding,
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`and then misrepresents the Federal Circuit’s holding as expressly construing claim
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`language to (conveniently) coincide with UUSI’s proposed construction. But in
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`fact, the Federal Circuit’s holding is narrow and the Board’s claim construction is
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`entirely consistent with it. Most of UUSI’s arguments hinge on its proposed
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`construction, which the Board explicitly rejected in its Institution Decision (“ID”).
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`UUSI’s remaining arguments are similarly weak, and many are undercut by the
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`deposition testimony of its own expert. As discussed herein and in the Petition, the
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`Challenged Claims are unpatentable.
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`II. Claim Construction
`A. The Board’s construction of “selectively providing signal output
`frequencies” is correct
`In its ID, the Board correctly construed the “term ‘selectively providing
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`signal output frequencies’ to encompass the microcontroller selecting a row or a
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`portion of the array of touch pads to provide signal output frequencies to the
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`array.” Decision, 32. The Board also correctly “determine[d] that the term ‘the
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`microcontroller selectively providing signal output frequencies to a closely spaced
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`array of input touch terminals of a keypad’ … does not require the microcontroller
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`to select signal output frequencies from multiple available frequencies.” Id., 31
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`(emphasis in original).
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`In the POR, UUSI focuses its arguments not on the Board’s proper
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`construction of “selectively providing signal output frequencies,” but instead on
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`the Federal Circuit’s decision in the Samsung Appeal. POR, 14-30. UUSI argues
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`that the decision mandates that the Board adopt UUSI’s construction of
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`“selectively providing signal output frequencies.” POR, 16. But UUSI
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`mischaracterizes both the procedural posture of the Samsung Appeal and the
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`Federal Circuit’s holding in attempting to force the Board to adopt its incorrect
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`construction. See id., 15-19. In fact, the Samsung Appeal is non-precedential and
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`does not “expressly construe” the relevant claim language. Thus, contrary to
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`UUSI’s arguments, the Board is not “obligated” to, and should not, jettison the
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`correct construction reached in the ID.
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`B.
`The Samsung Appeal is not “binding precedent” on the Board
`UUSI characterizes the Samsung Appeal as a “binding legal decision” that
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`the Board must follow under the “principle of stare decisis.” POR, 17-18. UUSI’s
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`characterization is demonstrably incorrect, as it ignores the statement on the first
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`page of the opinion stating that “[t]his disposition is nonprecedential.” Samsung,
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`2
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`775 F. App’x at 692. Thus, even if the Samsung Appeal did construe the claim
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`language in question (which it did not), such a construction would not be “binding
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`on the Board” as UUSI contends. POR, 3.
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`C. The Samsung Appeal does not expressly construe “selectively
`providing signal output frequencies”
`Even if the Samsung Appeal was precedential (which it is not), it does not
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`“expressly construe[] ‘selectively providing signal output frequencies’ to require
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`selection of a frequency, from among multiple possible frequencies” as UUSI
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`argues. POR, 14. In fact, the Federal Circuit ruled that the Samsung panel’s
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`“implicit claim construction” of “selectively providing signal output frequencies”
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`to “require that the microcontroller provide different frequencies to different rows
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`of touch pads” was “erroneous.” Samsung, 775 Fed. Appx. at 697. The court
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`found that “the claims are not limited to situations in which different frequencies
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`are provided to different rows.” Id.
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`This was the extent of the Federal Circuit’s holding regarding the meaning
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`of “selectively providing signal output frequencies.” Nowhere does the Federal
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`Circuit perform a full claim construction analysis. Nor does it provide an express
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`definition for the relevant claim language.
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`The only references to selection from multiple frequencies in the Samsung
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`Appeal are related to Samsung’s ground involving the Gerpheide reference and
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`that reference’s disclosure of selecting from multiple frequencies. The Opinion
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`states:
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`The question [for the Samsung panel on remand] is
`whether there would have been a reasonable expectation
`of
`success
`in modifying
`the
`Ingraham/Caldwell
`combination to “provide frequencies” to the touch pad in
`light of the teachings of Gerpheide (i.e., whether there
`was a reasonable expectation that the combination could
`have been modified to “provide” a frequency, selected
`from multiple possible frequencies, to the entire touch
`pad).
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`Samsung, 775 Fed. Appx. at 697.1 Thus, the mention of selection from multiple
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`frequencies merely describes Gerpheide’s disclosure and frames the question of
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`whether Samsung’s proposed combination of Ingraham, Caldwell, and Gerpheide
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`was proper. Nowhere does the Federal Circuit indicate that the independent claims
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`require selection from multiple frequencies.
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`The Board’s construction of “selectively providing signal output
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`frequencies” is consistent with the Federal Circuit’s holding in the Samsung
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`Appeal, including portions that UUSI cites, because, in the Board’s construction,
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`1 All emphasis added unless otherwise indicated.
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`“the claims are not limited to situations in which different frequencies are provided
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`to different rows.” Samsung, 775 Fed. Appx. at 697; Decision, 22-30.
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`D. UUSI’s construction is inconsistent with the claim language
`UUSI argues that “selectively providing signal output frequencies” requires
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`selecting a frequency from multiple frequencies. POR, 28-30. This interpretation
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`is inconsistent with the plain language of the claims. Petition, 9-10; Decision, 21-
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`32.
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`1.
`UUSI’s construction fails claim differentiation
`Claims 96-97 depend from, and thus further limit, claim 94. Claim 96
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`recites that “each signal output frequency selectively provided … has a same hertz
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`value.” Claim 97 recites that “each signal output frequency selectively provided
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`… is selected from a plurality of hertz values.” Because claim 94 is necessarily
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`broader than its dependent claims, claims 96-97 confirm that selection from
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`multiple frequencies is not required in claim 94. Otherwise, claim 97 would be
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`meaningless. Petition, 10. UUSI fails to address this argument, which is fatal to
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`its construction.
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`2.
`The claims of the ’183 patent do not recite selection of
`oscillator frequencies during the design of the circuit
`UUSI argues that its proposed construction “broadly encompasses a
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`‘selection’” of a frequency “that occurs during the design of a touch circuit.” POR,
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`20. Under UUSI’s construction, this selection during the design phase would be
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`performed by a human (e.g., a circuit designer). Ex. 2003, 254:1-255:8. But the
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`independent claims recite that “the microcontroller selectively provid[es] signal
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`output frequencies,” not a human. APPLE-1001, claim 37. Thus, the claim
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`language requires that the selection in the “selectively providing” must be
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`performed by the microcontroller, not a human.
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`In addition, the claimed selection must be an action described in the ’183
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`specification as being performed by the microcontroller. Gentry Gallery v.
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`Berkline, 134 F.3d 1473, 1480 (Fed. Cir. 1998) (holding that a claim “may be no
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`broader than the supporting disclosure”). As the ID notes, “in the ’183 patent, the
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`only selection made by the microcontroller is selection of rows to ‘sequentially
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`activate the touch circuit rows’ to ‘associate the received inputs from the columns
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`of the array with the activated touch circuit(s).’” Decision, 28 (citing APPLE-
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`1001, 18:43-49).
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`3.
`The Board’s construction does not render claim language
`“superfluous”
`UUSI argues that, if “the Board’s construction of element (a) were adopted,
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`element (b) would be rendered wholly superfluous, because element (a) would
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`already cover the selection of ‘which row’ receives the signal.” POR, 29 (citing
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`Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1399
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`(Fed. Cir. 2014)). This argument is flawed for several reasons.
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`First, UUSI’s reliance on Mformation Techs is misplaced. In that case, the
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`Federal Circuit held that a construction that interpreted transmission of a command
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`to include the establishment of a connection would render superfluous a separately
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`recited step of “establishing a connection.” Mformation Techs., 764 F.3d at 1399-
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`1400. But the “selectively providing limitation” here does not recite multiple
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`separate steps, and thus differs from the claim language in Mformation Techs. As
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`shown, element (b) further limits element (a), as indicated by its recitation that
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`“the selectively providing comprises” the additional recited features:
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` (b) wherein the selectively providing comprises
`the microcontroller selectively providing a signal output
`frequency to each row of the closely spaced array …
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`POR, 28-29. The “wherein” clause in element (b), thus, further narrows the
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`“selectively providing” recited in element (a); it does not create a new selection. In
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`fact, by definition, “selectively providing” in element (a) must be interpreted to
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`include the additional features it is recited as “comprising” in element (b).
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`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
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`
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`And, element (b) narrows element (a) under the Board’s interpretation.
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`Specifically, the Board construed “selectively providing” to involve “selecting a
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`row or a portion of the array of touch pads to provide signal output frequencies
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`to the array.” Element (b) clearly narrows this by requiring provision of “a signal
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`output frequency to each row of the closely spaced array.”
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`Case No. IPR2019-00358
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`Accordingly, contrary to UUSI’s contentions, the Board’s construction does
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`not render any limitations in the independent claims superfluous.
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`E. UUSI’s construction is inconsistent with the ’183 specification
`The ID correctly states that “under UUSI’s proposed construction … all of
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`the challenged claims would lack written description support from the
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`Specification.” Decision, 29 (emphasis in original). Thus, UUSI’s construction is
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`inconsistent with the ’183 specification and improper.
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`1.
`The Board must consider the ’183 specification
`UUSI attempts to limit the Board’s ability to consider the specification when
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`resolving claim construction, stating that Ҥ 112 issues, such as written description,
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`cannot be adjudicated in this Inter Partes Review” and that “the Board’s ‘written
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`description’ concerns are outside the scope of this proceeding.” POR, 19. This is
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`incorrect. It is well-settled that “claims must be read in view of the specification,
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`of which they are a part,” and that “the specification is always highly relevant to
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`the claim construction analysis” as it “is the single best guide to the meaning of a
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`disputed term.” Phillips v. AWH Corp., 415 F. 3d 1303, 1315 (Fed. Cir. 2005);
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`Gentry Gallery, 134 F.3d at 1480 (holding that a claim “may be no broader than
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`the supporting disclosure”). Thus, the Board’s consideration of the specification,
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`including its explanation of the consequences of adopting UUSI’s claim
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`construction, is entirely proper.
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`2.
`The ’183 specification does not support microcontroller
`selection of oscillator frequencies on the fly
`UUSI states that its construction does not “require[] that the microcontroller
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`‘select’ from multiple possible frequencies ‘on the fly,’ during operation of the
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`claimed device.” POR, 19. UUSI nonetheless argues that the ’183 specification
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`supports “selection of frequencies on the fly.” POR, 21-28. No such support
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`exists.
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`UUSI argues that the ’183 patent “instructs a POSITA to ‘provide for
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`different oscillator output frequencies,’ in order to strike the optimal balance
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`between crosstalk-rejection (improved by higher frequencies) and noise-
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`minimization (improved by lower frequencies). POR, 21-22 (citing APPLE-1001,
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`14:22-33). UUSI concludes that, because “the ’183 Patent expressly directs a
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`POSITA to provide different oscillator output frequencies, the Patent shows that
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`the inventors had possession of an embodiment that uses a variable-frequency
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`oscillator.” POR, 22. But the portion quoted by UUSI merely describes that an
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`oscillator’s frequency can be changed by varying “the values of the resistors and
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`capacitors” used in the oscillator. APPLE-1001, 14:22-25; APPLE-1034, ¶¶ 13-
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`14. The cited passage says nothing about varying the oscillator frequency during
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`operation of the touch circuit, and certainly does not “show[] that the inventors had
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`possession of an embodiment that uses a variable-frequency oscillator.” POR, 22;
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`APPLE-1034, ¶¶ 13-14.
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`The remainder of UUSI’s analysis speculates on how a POSITA would have
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`implemented this undescribed variable-frequency oscillator. POR, 22-24. UUSI,
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`in effect, argues that it would have been obvious to a POSITA to implement a
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`variable-frequency oscillator based on the ’183 disclosure and knowledge of a
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`POSITA. Id. But it well-settled that a “description which renders obvious a
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`claimed invention is not sufficient to satisfy the written description requirement of
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`that invention.” Knowles Electronics LLC v. Cirrus Logic, Inc., 883 F.3d 1358,
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`1356 (Fed. Cir. 2018). Further, “[i]t is not sufficient for purposes of the written
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`description requirement of § 112 that the disclosure, when combined with the
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`knowledge in the art, would lead one to speculate as to modifications that the
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`inventor might have envisioned, but failed to disclose.” Lockwood v. American
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`Airlines, Inc., 107 F. 3d 1565, 1572 (Fed. Cir. 1997).
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`Accordingly, the ’183 patent does not provide written description support for
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`selection of frequencies “on the fly.”
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`Case No. IPR2019-00358
`Attorney Docket No: 39521-0062IP4
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`III. Claims 37, 94, 96, 101, 105, and 106 the combination of Chiu and
`Schwarzbach, and claims 105 and 106 are obvious over Chiu (Ground 1A)
`A. Claims 105 and 106 are obvious over Chiu and the combination of
`Chiu and Schwarzbach (Ground 1A)
`As the Board correctly notes, the Petition “asserts that Chiu alone teaches all
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`limitations recited in independent claim 105, as well as claim 106, which depends
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`from claim 105.” Decision, 32. Indeed, the only limitations where the Petition
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`relies on disclosure from Schwarzbach (“oscillator voltage [being] greater than a
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`supply voltage” in claim 37, “a peak voltage of the signal output frequencies
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`[being] greater than a supply voltage” in claim 94, and “a battery” in claim 101)
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`are not present in claim 105. The Petition also argues that Schwarzbach teaches an
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`oscillator having a predefined frequency, but this argument is presented in the
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`alternative, with the primary argument being based on Chiu alone. Petition, 22-27
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`(“A POSITA would have understood the signal generator circuitry of Chiu to
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`render obvious the claimed ‘oscillator.’”), 27-28 (“in the combination,
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`Schwarzbach also teaches an ‘oscillator[.]’”). The Chiu-alone ground is analogous
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`to the ground presented in Realtime Data, where the Federal Circuit found that the
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`Board was correct in finding a claim obvious over a single reference from a
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`proposed two reference combination because the petitioner only argued the
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`secondary reference in the alternative. Realtime Data, LLC v. Iancu, 912 F.3d
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`1368, 1373 (Fed. Cir. 2019); Decision, 48. Moreover, claims 105 and 106 are also
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`obvious over the combination of Chiu and Schwarzbach because reasons exist for
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`Case No. IPR2019-00358
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`combining Chiu and Schwarzbach (see Petition, 19-21) and that combination
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`includes all features of claims 105 and 106, even if all necessary features are
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`disclosed by Chiu.
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`B. Chiu teaches “selectively providing signal output frequencies”
`(Claims 37, 94, and 105)
`The POR includes several arguments addressing this claim language, all of
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`which fail.
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`1.
`UUSI’s arguments are based on its improper construction
`As explained above, UUSI’s construction that requires the “signal output
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`frequencies” to be “selected from multiple frequencies” is improper. Section II,
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`supra. UUSI’s arguments in the POR that Chiu does not teach “selectively
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`providing signal output frequencies” is based on this improper construction, and
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`therefore fails. POR, 32. If the Board does not adopt UUSI’s improper
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`construction (which it should not), its analysis of this limitation can end here; the
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`following sections address Chiu’s disclosure in view of UUSI’s erroneous
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`construction.
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`2.
`Chiu teaches “selectively providing signal output frequencies”
`even under UUSI’s construction
` UUSI’s construction merely requires “provid[ing] a frequency, selected
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`from multiple possible frequencies, to the entire touch pad.” POR, 19. UUSI
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`states that “[n]othing” in its construction “requires that the microcontroller ‘select’
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`Case No. IPR2019-00358
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`from multiple possible frequencies ‘on the fly,’ during operation of the claimed
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`device.” Id. UUSI admits that its construction “broadly encompasses a ‘selection’
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`that occurs during the design of a touch circuit.” POR, 20.
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`During deposition, UUSI’s expert admitted that when a designer designs a
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`circuit, such as the circuit described in Chiu, the circuit designer necessarily selects
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`an oscillator with a particular frequency and designs the rest of the circuit to work
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`with that selected frequency. APPLE-1033, 29:1-5 (“Q:…if you were designing a
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`circuit that included an oscillator, you would select an oscillator knowing its
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`frequency, correct? A: Yes.”), 29:6-16 (“Q: And the rest of the circuit would be
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`designed to handle the signal of that frequency, correct…? A: …you would design
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`the system so that it…worked with the oscillator that you had.”), 30:7-12 (“Q: So
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`if an oscillator appears in a circuit, it's safe to say that it was selected at the design
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`stage for that circuit? A:… at the design stage, you would plan on the oscillator
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`and the components that were in there.”).
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`In addition, different oscillators existed by the Critical Date that produced
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`periodic signals of different frequencies. See APPLE-1034, ¶ 11; see, e.g.,
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`APPLE-1005, 2:27-30 (describing that different oscillators produced frequencies
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`“greater than 150 kHz and preferably in the range of between 150 kHz and 500
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`kHz.”); APPLE-1001, 14:22-33 (describing that “those skilled in the art” were
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`aware of oscillators producing different frequencies). Accordingly, when a circuit
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`Case No. IPR2019-00358
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`designer selects a particular oscillator (and thus a particular frequency), the
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`designer selects from multiple possible frequencies. APPLE-1034, ¶ 11.
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`Thus, the selection of the oscillator component during the design of the Chiu
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`circuit necessarily includes the selection of a frequency, and therefore Chiu teaches
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`“a ‘selection’ [of a frequency] that occurs during the design of a touch circuit.”
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`APPLE-1033, 29:1-16, 30:7-12; Petition, 22-28; APPLE-1034, ¶ 12. Accordingly,
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`even if UUSI’s improper construction is adopted, claims 37, 94, and 105 are still
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`obvious.
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`C. Chiu teaches “providing a periodic output signal having a
`predefined frequency” (Claims 37, 94, and 105)
`The Petition shows that Chiu teaches “providing a periodic output signal
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`having a predefined frequency.” Petition, 22-28. For example, Chiu’s FIG. 7
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`shows the periodic drive signals provided to the various rows of touch circuits:
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`Case No. IPR2019-00358
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`APPLE-1005, Detail of FIG. 7
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`UUSI argues that “nothing in Chiu describes the signals depicted in Figure 7
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`as ‘pulsating,’ ‘periodic,’ ‘regular,’ or anything else that would suggest a repeating
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`signal of ‘predefined’ frequency.” POR, 35. But UUSI’s expert admitted during
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`deposition that Chiu’s FIG. 7 depicts a periodic signal of a particular frequency.
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`APPLE-1033, 39:7-9 (“Q. If that period was related to the scan rate … would the
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`signal on R0 be periodic? A. It can be periodic.”), 41:4-13 (“if this is showing the
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`scan rate…it would be periodic, and it would have a frequency.”). And, Chiu
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`clearly describes its signals as “pulsating.” APPLE-1005, 6:39-42 (“pulsating
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`signal from signal generator 54” in FIGS. 4A and 4B of the invention”).
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`D. Chiu teaches a “closely-spaced array” (Claims 37, 94, and 105)
`As discussed in the Petition, Chiu teaches that its techniques allow for
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`“closer spacing of touch switch cells for greater switch density on” the touch cell
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`array 10. Petition, 33; APPLE-1005, Abstract. Indeed, Chiu’s “touch panel 10
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`comprises an array of touch sensitive switch cells 12” that “include relatively
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`small area touch pads 13 which can be located on closely spaced centers providing
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`the relatively high number of switches in a relatively small panel area.” APPLE-
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`1005, 4:1-6; 4:17-19 (“closely spaced touch pads”); 1:47-2:9; 2:29-36. Thus, Chiu
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`teaches the “closely spaced array of input touch terminals” recited in the claims.
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`E. A POSITA would have been motivated to combine Chiu and
`Schwarzbach as described in the Petition
`The Petition provides a detailed description of the combination of Chiu and
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`Schwarzbach, along with an analysis of the reasons why a POSITA would have
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`combined the references and why the POSITA would have had a reasonable
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`expectation of success. Petition, 17-21. The Board preliminarily found this
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`analysis “sufficiently [shows] that a person of ordinary skill in the art would have
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`been motivated to combine Chiu and Schwarzbach.” Decision, 52.
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`The POR includes various arguments against the combination, but these
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`arguments fail.
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`1.
`A POSITA would have looked to Schwarzbach for information
`on the supply voltage of Chiu’s microprocessor
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`UUSI asserts that a POSITA “would surely have looked in official product
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`documentation from Texas Instruments” for the supply voltage of Chiu’s
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`microprocessor rather than to Schwarzbach. POR, 40-41. Through these
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`statements, UUSI admits that a POSITA would have looked to outside sources for
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`information on the TMS 1670 processor in light of no particular supply voltage
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`being described in Chiu. Id.; APPLE-1034, ¶ 15. But it then argues that these
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`outside sources are limited to official production documentation provided by the
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`manufacturer of the microprocessor (Texas Instruments). Id. In effect, UUSI
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`invents a new requirement for obviousness combinations mandating that only
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`“official product documentation” can be relied on for commercial products. Id. Of
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`course, UUSI cites no authority supporting such a requirement, because it is not the
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`law. Notably, UUSI does not allege that the supply voltage described in
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`Schwarzbach is incorrect, or provide any reason why disclosure of a commercial
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`component in an issued US patent cannot be relied on in an obviousness
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`combination with another issued US patent that describes the same component.
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`POR, 40-41.
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`2.
`Schwarzbach does not include “conflicting information”
`regarding the supply voltage
`UUSI argues that “Schwarzbach gives conflicting information about the
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`proper supply voltage” by describing a “VDD supply voltage of approximately +16
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`volts” (relied on by Apple) and a “VSS supply” of “about +25” volts. POR, 41. As
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`UUSI’s expert admitted during deposition, the abbreviation “VDD” denotes a
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`supply voltage, and the abbreviation “VSS” denotes a ground voltage. APPLE-
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`1033, 10:20-11:3 (“Q. And the abbreviation ‘VDD’ is usually used to denote a
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`supply voltage, correct? A….VDD can often be used to mean a supply voltage.”).
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`Thus, UUSI’s argument that a POSITA would be unclear about whether the VDD or
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`VSS voltage in Schwarzbach represented a supply voltage is undercut by its own
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`expert’s clear understanding of the same. UUSI’s argument that the Petition “has
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`not proven a reasonable expectation of success” is similarly based on this supposed
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`confusion regarding Schwarzbach’s disclosed supply voltage, and should be
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`rejected for the same reasons.
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`F. Chiu and Schwarzbach teaches that “an oscillator voltage is
`greater than a supply voltage” (Claim 37)
`In its ID, the Board states that “Petitioner does not show sufficiently that the
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`proposed combination of Chiu and Schwarzbach teaches all limitations of claim
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`37.” Decision, 50. The Board focuses its analysis on the Petition’s arguments
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`regarding the “transmitter/modulator” of Schwarzbach, and finds such arguments
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`unpersuasive. Id., 49.
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`But the Petition describes a simpler combination of Chiu and Schwarzbach
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`in which the 30 volt output taught by Chiu is combined with the 16 volt supply
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`voltage taught by Schwarzbach. The Petition describes these attributes of the
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`Case No. IPR2019-00358
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`combination in overview sections presented prior to the analysis of the individual
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`elements of the claims of the ’183 patent and references them in its assessment of
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`claim 37. Petition, 17-21; 28-30. In particular, the Petition describes that, in the
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`combination of Chiu and Schwarzbach, Chiu describes a “TMS 1670
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`microprocessor” that generates a “scan pulse signal” having a peak voltage of “30
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`volts.” Petition, 17-18 (citing APPLE-1005, 9:7-9, 1005, Abs