Paper No. 23
`Filed: April 3, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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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 IPR2019-00358
`Patent No. 5,796,183
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`____________________
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`
`PATENT OWNER’S SUR-REPLY BRIEF
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`
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`1817296
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`Filed: April 3, 2020
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE, INC.
`Petitioner
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`____________________
`
`
`Case IPR2019-00358
`Patent No. 5,796,183
`
`____________________
`
`
`PATENT OWNER’S SUR-REPLY BRIEF
`
`
`
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`1817296
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`Case IPR2019-00358
`Patent No. 5,796,183
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. ARGUMENT ................................................................................................... 1
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`A.
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`The Board Should Adopt the Federal Circuit’s Construction ............... 1
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`1.
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`2.
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`3.
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`The Federal Circuit Issued an Express Claim
`Construction ................................................................................ 1
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`The Board Should Adopt the Federal Circuit’s
`Construction ................................................................................ 3
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`The Federal Circuit’s Construction Is Correct on the
`Merits .......................................................................................... 4
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`B.
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`Chiu Does Not Disclose “Selectively Providing Signal Output
`Frequencies” ........................................................................................ 10
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`C.
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`Chiu Does Not Disclose a “Closely-Spaced Array” ........................... 12
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`D. Apple Has Not Proven a Reasonable Expectation of Success in
`Combining Chiu and Schwarzbach ..................................................... 13
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`E.
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`F.
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`The Board’s Ruling on Claim 37 Was Correct ................................... 14
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`Neither Chiu Nor Schwarzbach Teaches Element 94f ........................ 17
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`G. Apple Has Failed to Prove Obviousness of Claim 101 ....................... 18
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`H. Apple Failed to Prove Obviousness Under Ground 1C ...................... 19
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`III. CONCLUSION .............................................................................................. 25
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`I.
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`INTRODUCTION
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`Apple accuses Nartron of “misrepresent[ing] the Federal Circuit’s holding” in
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`Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). Paper 19
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`(“Reply”) at 1. Nartron did no such thing. Nartron stated that the Federal Circuit
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`issued a “claim construction,” Paper 16 (“POR”) at 15-19, because the Federal
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`Circuit characterized its own decision as a “claim construction.” Samsung, 775 F.
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`App’x at 697. Applying the Federal Circuit’s construction, Apple has not established
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`that any claim is unpatentable. Apple’s Petition also fails for reasons unrelated to
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`claim construction. Thus, the patentability of all challenged claims should be
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`confirmed.
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`II. ARGUMENT
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`A. The Board Should Adopt the Federal Circuit’s Construction
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`1.
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`The Federal Circuit Issued an Express Claim Construction
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`The Federal Circuit’s Samsung opinion states: “[b]ased on the proper claim
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`construction, we vacate and remand for the Board to consider whether … the
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`combination could have been modified to ‘provide’ a frequency, selected from
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`multiple possible frequencies, to the entire touch pad).” Id. This statement
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`expressly construed the “selectively providing” term to mean “providing a
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`frequency, selected from multiple possible frequencies, to the entire touch pad.”
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`Apple asserts that the Federal Circuit “d[id] not expressly construe” the
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`“selectively providing” term. Reply, 3-5. Not so. The Federal Circuit found that the
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`Board implicitly construed the “selectively providing” limitation as requiring a
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`microprocessor to provide “different frequencies to different rows” of the touch pad.
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`Samsung, 775 Fed. App’x at 697. According to the Federal Circuit, the Board’s
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`implicit construction erred because “selectively providing” does not require
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`providing different frequencies to different rows; rather, it requires “that different
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`frequencies be provided to the entire pad.” Id. This alone confirms that the Federal
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`Circuit construed “selectively providing” to require selecting a frequency, from
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`multiple frequencies, to provide to the entire touch pad.
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`Apple next asserts that the Federal Circuit’s discussion of “select[ing] from
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`multiple possible frequencies” was not a “claim construction,” but merely a
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`discussion of the “Gerpheide” reference. Reply, 3-4. This is incorrect. The Federal
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`Circuit instructed the Samsung panel to decide, on remand, whether a POSITA
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`would have had a
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`reasonable expectation of
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`success
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`in modifying
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`Ingraham/Caldwell/Gerpheide to “provide a frequency, selected from multiple
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`possible frequencies.” Samsung, 775 Fed. App’x at 697. The Federal Circuit would
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`not have issued this instruction unless it determined that the claims require such a
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`“selection.” BTG Int’l Ltd. v. Amneal Pharm. LLC, 923 F.3d 1063, 1074 (Fed. Cir.
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`2019) (“reasonable expectation of success” must be viewed “under [the claim]
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`construction.”) Thus, the Federal Circuit’s instruction confirms that it construed
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`“selectively providing” to require selection from among multiple frequencies.
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`2.
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`The Board Should Adopt the Federal Circuit’s Construction
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`Apple points to the fact that the Federal Circuit designated its Samsung
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`decision “nonprecedential.” Reply, 2. But the Federal Circuit permits parties to cite
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`non-precedential decisions. Fed. Cir R. 32.1(c). Lower tribunals routinely follow
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`non-precedential Federal Circuit decisions. See, e.g., Permacel Kansas City, Inc. v.
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`Soundwich, Inc., 2006 WL 1449979 at *3 (W.D. Mo. 2006); General Protecht
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`Group, Inc. v. Leviton Manufacturing Co., 2015 WL 4988635, *16 (D.N.M. 2015).
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`Tribunals are particularly apt to follow non-precedential Federal Circuit claim
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`construction decisions involving the same patents and claim terms at issue. See, e.g.,
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`Aspex Eyewear, Inc. v. Concepts In Optics, Inc., 211 F. App’x 955, 957 (Fed. Cir.
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`2007); Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1338 (Fed. Cir.
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`1999). And, this Board has repeatedly noted that it may rely on, and adopt, the
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`Federal Circuit’s non-precedential decisions. Ex Parte Colin Rule, No. APPEAL
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`2017-009307, 2018 WL 3004509, at *4 (P.T.A.B. May 25, 2018); Ex Parte Takayuki
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`Sano, No. APPEAL 2017-002144, 2018 WL 388953, at *3 (P.T.A.B. Jan. 10, 2018).
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`The Samsung panel issued an opinion construing the exact same claim term,
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`in the same patent at issue before the Board. Accordingly, “[i]t would ... be reckless,
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`to say the least, for [the Board] to rule in a manner inconsistent with an unpublished
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`opinion of a panel of [its] reviewing court.” Permacel, 2006 WL 1449979 at *3. The
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`Federal Circuit’s clear, well-reasoned, and correct construction should be followed.
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`3.
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`The Federal Circuit’s Construction Is Correct on the Merits
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`The Federal Circuit’s construction is correct on the merits. See POR, 28-31.
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`Apple’s arguments to the contrary lack merit.
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`First, Apple asserts that the Federal Circuit’s construction “fails claim
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`differentiation.” Reply, 5. According to Apple, the Federal Circuit’s construction
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`makes claim 97 coextensive with claim 94. Id. Apple is mistaken.
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`Claim 94 recites “the microcontroller selectively providing signal output
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`frequencies to ... a keypad.” Under the Federal Circuit’s construction, this requires
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`the microcontroller to “select” a frequency, from multiple frequencies, to send to the
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`keypad. Claim 94 contains no requirement on whether each row of the keypad
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`receives the same, or a different, frequency. Those requirements are recited in claims
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`96-97. Claim 96 recites that “each signal … provided to each row … has a same
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`Hertz value” – i.e., each row receives the same frequency. Claim 97 recites that
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`“each signal … provided to each row … is selected from a plurality of Hertz values”
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`– i.e., each row can receive a different frequency. Thus, claims 96 and 97 further
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`limit claim 94, under the Federal Circuit’s construction, by adding additional
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`limitations regarding whether each row of the array receives different frequencies.
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`Claim 94, as construed, contains no such limitations. Thus, the Federal Circuit’s
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`construction does not make claim 94 coextensive with claims 96-97.
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`Second, Apple asserts that the Federal Circuit’s construction does not
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`“encompass[] a ‘selection’ of a frequency that occurs during the design [stage],”
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`because “the claims recite that the microcontroller selectively provid[es] signal
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`output frequencies, not a human.” Reply, 5-6. Again, Apple is mistaken.
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`Although the claimed component that “provides” signals to the keypad is the
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`“microcontroller,” the claims do not require that the selection of frequency be
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`performed by the microcontroller. Claim language directed to a “selection” typically
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`encompasses selection performed by a human. See, e.g., Move, Inc. v. Real Estate
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`All. Ltd., 413 F. App’x 280, 283 (Fed. Cir. 2011) (non-precedential); PaymentOne
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`Corp. v. PayPal, Inc., No. 11-CV-02186-YGR, 2013 WL 4008829, at *9 (N.D. Cal.
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`Aug. 2, 2013); Ampex Corp. v. Eastman Kodak Co., 460 F. Supp. 2d 541, 557 (D.
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`Del. 2006). Nartron’s claims are no different.
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`Bos. Sci. Corp. v. Cook Inc., 187 F. Supp. 3d 249, 295 (D. Mass. 2016) is
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`instructive. There, the claims recited “a stent in which the diameters … ‘are selected
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`to facilitate a placement.’” Id. The court concluded, based on the claims and
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`specification, that the “selection” should be performed by the stent designer. Id.
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`Thus, the court construed “selected” to mean “selected by the designer.” Id.
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`Here, as in Bos. Sci., the ‘183 specification and claims clearly contemplate
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`that the “selection” of frequencies can be performed by the circuit’s designer. Paper
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`12 (“Decision”) at 28; POR, 20-21. The specification teaches that a circuit designer,
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`constructing an embodiment of the invention, can select different “values of the
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`resistors and capacitors utilized in oscillator 200 … to provide for different oscillator
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`output frequencies.” Ex. 1001, 14:22-33. Apple’s own expert admits that the claims
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`encompass a selection of frequencies that “take[s] place during the design phase.”
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`Ex. 2003, 254:19-255:8. Thus, as in Bos. Sci., the challenged claims encompass a
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`“selection” of frequencies that occurs during the design phase.
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`Third, Apple denies that the Board’s construction of “selectively providing”
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`renders claim language superfluous. Reply, 6-8. However, Apple’s arguments show
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`that the Board’s construction does render language superfluous.
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`Apple asserts that “element (b) narrows element (a) under the Board’s
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`interpretation,” because the Board construed element (a) to mean that “a portion of
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`the array of touch pads” receives the signal output frequencies, while element (b)
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`limits that “portion” to being the “entire array.” Id. However, this interpretation
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`renders element (a) superfluous, because element (a)’s recitation (as construed) that
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`a generic “portion of the array” receives the “signal output frequency” is superseded
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`by the later recitation, in element (b), that the entire array receives the “signal output
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`frequency.” If Nartron had merely intended to claim that “the entire array receives
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`the signal output frequency,” it would have omitted element (a), because element (b)
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`fully captures this feature.
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`Claims should be construed to give effect to each of their limitations. Exxon
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`Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995). The
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`Board’s preliminary construction violates this rule, because it lumps elements (a)
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`and (b) into a single element, with only one limitation: providing the signal output
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`frequency to “each row of the closely spaced array.” By contrast, the Federal
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`Circuit’s construction satisfies the rule, because it treats elements (a) and (b) as two
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`separate limitations, wherein element (a) requires selection of a frequency, and
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`element (b) requires that this frequency is provided “to each row.” This is the only
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`construction that gives effect to all of the claim language. Thus, it should be adopted.
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`Fourth, Apple asserts that the Federal Circuit’s construction is “inconsistent
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`with the ‘183 specification.” Reply, 8. Apple is mistaken.
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`The Federal Circuit’s construction encompasses embodiments in which the
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`“selection” of frequencies occurs at the design phase. POR, 19-21; Ex. 2004, ¶¶ 56-
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`63. Apple does not dispute that the specification supports such embodiments, and
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`nor could it. To satisfy the written description requirement, the specification only
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`needs to show that the inventor “had possession of at least one embodiment that
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`meets the [claim] construction.” Tobinick v. Olmarker, 753 F.3d 1220, 1227 (Fed.
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`Cir. 2014); Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,
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`635 F.3d 1373, 1380 (Fed. Cir. 2011) (same). Here, the specification shows that the
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`inventor possessed “at least one embodiment” that falls within the Federal Circuit’s
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`construction—i.e., an embodiment where frequency selection occurs at the design
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`phase. Thus, the claims are supported, under the Federal Circuit’s construction.
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`The Federal Circuit’s construction also encompasses embodiments in which
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`the frequency is selected “on the fly.” POR, 21-27. The specification also supports
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`such embodiments. Id. Thus, the Federal Circuit’s construction is fully supported.
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`Apple argues that Nartron has merely shown that “it would have been obvious
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`to implement” on-the-fly frequency selection in the ‘183 patent. Reply, 10. Not so.
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`Nartron’s expert, Dr. Cairns, testified that the ‘183 specification shows that the
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`inventor actually possessed an “on-the-fly” embodiment. Ex. 2004, ¶¶ 64-86. Dr.
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`Cairns explained that the specification’s instruction to “vary” the resistors and
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`capacitors in the oscillator contemplates the use of variable resistors and capacitors,
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`to change frequencies on-the-fly. Id., ¶¶ 67-74. Dr. Cairns then identified a number
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`of commercially-available components which a POSITA could have used to perform
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`these functions. Id. While the specification does not expressly identify any of these
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`components, “the minutiae of descriptions or procedures perfectly obvious to one of
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`ordinary skill in the art … need not be set forth.” Application of Eltgroth, 419 F.2d
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`918, 923 (CCPA 1970). The identification of particular commercially-available
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`resistors, capacitors, etc. is a “known detail” which “need not be included in a patent
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`specification.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). The
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`specification discloses that the inventor possessed an embodiment in which
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`frequency selection occurs on-the-fly. That is all that is required.
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`Fifth, if the Board’s construction were adopted as Apple seeks, the claims
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`would not require “selecting” a frequency at all. Under the Board’s construction, the
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`only “selection” that occurs is a selection of rows. Decision, 32. However, a key
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`element of the invention is selecting an appropriate frequency, to optimize the
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`relative impedance of surface-contaminant paths. Ex. 1001, Fig. 3, 5:43-55, 6:60-
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`7:6. The ‘183 patent grew out of a “study” which the inventor performed to
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`determine the optimal scan frequencies for close-proximity touch arrays. Id., 8:19-
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`11:60. The ‘183 patent describes this study, and then reports its conclusion: “higher
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`frequencies” are optimal. Id. The ‘183 patent’s “switching circuit” incorporates the
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`“use of higher frequencies,” as suggested by the study. Id., 11:60-65.
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`Thus, selecting an appropriate frequency is a key element of the invention.
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`Yet, the Board’s construction reads selection of frequencies entirely out of the
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`claims. Such a construction, which is directly “at odds with the purposes of the
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`invention,” is improper. Osram GmbH v. Int'l Trade Comm’n, 505 F.3d 1351, 1358
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`(Fed. Cir. 2007). The Federal Circuit’s construction properly requires selection of
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`frequencies, in accordance with the invention. Thus, it should be adopted.
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`Under the Federal Circuit’s construction, neither Chiu nor Schwarzbach
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`supplies the “selectively providing” element. POR, 32-34. Thus, all grounds in the
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`Petition fail, because all grounds rely on Chiu, or a combination of Chiu and
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`Schwarzbach.
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`B. Chiu Does Not Disclose “Selectively Providing Signal Output
`Frequencies”
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`Apple asserts that Chiu discloses “selectively providing signal output
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`frequencies” under the Federal Circuit’s construction. Reply, 12-14. According to
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`Apple, “the selection of the oscillator component during the design of the Chiu
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`circuit necessarily include[d] the selection of a frequency,” and thus, Chiu inherently
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`discloses selecting a frequency. Id. at 14. Apple is mistaken.
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`Apple’s Petition asserts that the “signal generator circuitry” of Chiu’s TMS
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`1670 microprocessor corresponds to the claimed “oscillator.” Petition, 25-26. Apple
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`suggests that, by “selecting” the TMS 1670 microprocessor, Chiu inherently
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`“selected” a frequency for its scan signals. Reply, 12-14. This is not true.
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`Chiu does not say anything about the operating frequencies of the TMS 1670
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`processor. However, Schwarzbach does. Schwarzbach states that the TMS 1670 has
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`“oscillator input terminals,” to which a “capacitor 107,” a “variable resistor 108,”
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`and a “resistor 109” can be connected to “adjust[]” the “clock frequency” of the
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`TMS 1670. Ex. 1014, 8:12-20. Thus, the clock frequency of the TMS 1670 can be
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`“adjusted” by external components – meaning, the mere act of selecting the TMS
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`1670 microprocessor does not select a particular frequency.
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`Moreover, Schwarzbach indicates that the scan frequency of the TMS 1670
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`can be completely different from the clock frequency. Schwarzbach states that, in its
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`TMS 1670, “[a]ll eight pins are scanned once during each cycle of AC line voltage.”
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`Id., 4:55-65. Thus, in Schwarzbach, the scan frequency is 60 Hz, far less than the
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`500 kHz clock frequency. Id., 7:10-17. Apparently, the TMS 1670 can set its scan
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`frequency as something other than the clock frequency. However, Chiu says nothing
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`about how the TMS 1670 does this, and Apple offers no evidence on this point.
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`Apple bears the burden of proving that all elements of the challenged claims
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`are in the cited art. Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1194 (Fed.
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`Cir. 2014). Chiu’s mere selection of the TMS 1670 microprocessor does not “select”
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`a frequency, because the TMS 1670 can scan at multiple different frequencies, and
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`nothing in Chiu discloses the selection of a particular frequency. Thus, Apple has
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`not met its burden of proving that Chiu “selects” a frequency, as required.
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`Apple asserts that Nartron’s expert “admitted” that Chiu’s “circuit designer
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`necessarily select[ed] an oscillator with a particular frequency.” Reply, 13. Not so.
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`In the cited excerpts, Nartron’s expert was not discussing Chiu—he was discussing
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`a hypothetical “circuit design” process posited to him by Apple’s counsel. Ex. 1033,
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`28:13-30:21. Nartron’s expert never “admitted” that Chiu discloses the “selectively
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`providing” element, or any other element.
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`Finally, Apple notes that “different oscillators existed by the Critical Date that
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`produced … different frequencies.” Paper 19 at 13.1 That is irrelevant. Apple’s
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`1 Apple purports to cite Chiu, at 2:27-30, for the proposition that “different
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`burden was to show that Chiu discloses “providing a frequency, selected from
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`multiple possible frequencies, to the entire touch pad.” Samsung, 775 Fed. App’x at
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`697. Apple has not met that burden. Thus, because the “selectively providing” term
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`appears in all challenged claims, all challenged claims should be confirmed.
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`C. Chiu Does Not Disclose a “Closely-Spaced Array”
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`Nartron’s POR argued that Chiu does not disclose the claimed “closely-
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`spaced array,” because—under the proper construction—this “array” must be
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`“sufficiently closely-spaced that, if high frequencies were not used, surface
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`contamination would cause significant crosstalk.” POR, 38-40. Because Chiu does
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`not disclose such spacing, Nartron argued, Chiu does not meet the claims. Id.
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`Apple’s Reply completely ignores this argument. Reply, 16. By failing to
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`respond to this argument, Apple has conceded it. Lucas v. Office of Pers. Mgmt., 614
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`F. App’x 491, 494 (Fed. Cir. 2015). Since “closely-spaced array” appears in all
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`challenged claims, and Apple has conceded that Chiu does not disclose such an array
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`under the proper construction, all challenged claims should be confirmed.
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`In arguing to the contrary, Apple relies on Chiu’s statement that it allows for
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`“closer spacing” of touch terminals. Reply, 16. However, Chiu achieved “closer
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`oscillators produced frequencies ‘greater than 150 kHz and preferably in the range
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`of between 150 kHz and 500 kHz.’” Reply, 13. Chiu contains no such disclosure.
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`spacing,” relative to prior art touch terminals in 1982, by changing the geometry of
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`the terminal, from a three-electrode terminal to a two-electrode terminal. POR, 38-
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`40. By 1996, when the ‘183 patent was filed, two-electrodes terminals were already
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`the standard. The ‘183 patent achieved further improvements in spacing, over
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`Chiu’s improvement, by determining the optimal scan frequency range to mitigate
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`crosstalk between adjacent terminals. This is what the claimed “closely-spaced
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`array” is directed to. Chiu does not disclose an array that is so closely-spaced that
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`high-frequency signals must be used. Thus, Chiu does not teach or suggest this
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`subject matter.
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`D. Apple Has Not Proven a Reasonable Expectation of Success in
`Combining Chiu and Schwarzbach
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`Apple’s combination of Schwarzbach and Chiu would not work, because that
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`combination supplies the TMS 1670 with only a single input voltage—
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`Schwarzbach’s VDD voltage of “+16V”—but the TMS 1670 requires two input
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`voltages, with a “potential of about 9 volts” between them. POR, 42-43. Apple’s
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`only response is to note that Nartron’s expert testified that “VDD can … mean a
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`supply voltage,” and “VSS … can” denote a ground voltage. Reply, 17-18. This
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`ignores the issue.
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`Apple bears the burden to show “how the combination of the [cited] references
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`was supposed to work.” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994
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`(Fed. Cir. 2017). To do that, Apple must show how the TMS 1670 microprocessor
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`could be powered by a single supply voltage of +16V, when Schwarzbach states that
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`that microprocessor requires two supply voltages. Ex. 1014, 6:5-24. Apple has made
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`no effort to explain how the TMS 1670 microprocessor could be powered by a single
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`supply voltage. Thus, Apple has not met its burden of proof, and all grounds of
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`obviousness based on the Chiu-Schwarzbach combination should be denied.
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`E.
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`The Board’s Ruling on Claim 37 Was Correct
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`The Board correctly found that, in Apple’s Petition, the only reference Apple
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`relied upon to teach element 37b was “Schwarzbach.” Decision, 49. Apple now
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`asserts otherwise. Reply, 18-21. According to Apple, its argument relying on
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`Schwarzbach’s “transmitter/modulator 110” was merely a “secondary argument.”
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`Id. at 20. Apple claims that its “core” argument was that element 37b is satisfied by
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`comparing the 16V input voltage supplied to the TMS 1670 processor in
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`Schwarzbach with the 30V keyboard-scan voltage of Chiu. Id., 18-21.
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`Apple is rewriting its Petition after the fact. This is improper. SAS Inst., Inc.
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`v. Iancu, 138 S. Ct. 1348, 1357 (2018). Ground 1A of Apple’s Petition includes
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`several “overview” sections, which purport to summarize Chiu and Schwarzbach.
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`Petition, 16-21. After these “overview” sections, the Petition proceeds to analyze the
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`specific disclosures in Chiu and Schwarzbach that purportedly read on the claims.
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`Id., 21-46. This detailed identification of “where each element of the claim is found
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`in the prior art” is required by 37 C.F.R. § 42.104(b)(4).
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`Apple’s Rule 42.104(b)(4) disclosure for element 37b is set forth at pages 28-
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`30 of the Petition. This section never identifies the 30V voltage of Chiu as the
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`“oscillator voltage.” Rather, the only voltage asserted to be the “oscillator voltage”
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`is the “18 volts” of Schwarzbach’s “transmitter/modulator 110.” Since this is the
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`only voltage cited in Apple’s Rule 42.104(b)(4) disclosure, that is the only voltage
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`Apple can rely upon to prove unpatentability. As the Board found, that voltage is not
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`an “oscillator voltage.” Thus, the Petition fails against claim 37. Decision, 49-50.
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`Apple tries to save the Petition by noting that its Rule 42.104(b)(4) disclosure
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`cites to “Section III.A.4 supra.” Reply, 19-20. According to Apple, this
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`incorporates-by-reference the portion of Apple’s “overview” section which
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`compared the 30V output voltage of Chiu to the 16V “supply voltage” of
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`Schwarzbach. Id. However, that discussion was in Section III.A.3, not Section
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`III.A.4. Petition, 17-18. Section III.A.4 contains no discussion of Chiu’s 30V
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`voltage. Id., 19-20. Thus, the citation to “Section III.A.4 supra” does not preserve
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`any right to rely on Chiu’s 30V signal as the “oscillator voltage”
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`Apple had to “identif[y] … with particularity … the grounds on which the
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`challenge to each claim is based.” 35 U.S.C. § 312(a)(3). Apple did so: It asserted
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`that element 37b was met by the 16V and 18V voltages in Schwarzbach. Having lost
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`that argument, Apple now digs back into its “overview” sections, to argue that it also
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`asserted a ground based on the 30V signal in Chiu. This is improper.
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`Petitioner cannot be allowed, after-the-fact, to scour every word of their
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`Petition, and cobble together language asserting a new “ground” of unpatentability
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`that was never properly raised. This is not what Congress had in mind when it
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`required petitioners to identify the grounds for their challenge “with particularity”
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`(35 U.S.C. § 312(a)(3)), and is not what the Supreme Court had in mind when it
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`ruled that “the petitioner’s contentions … define the scope of the litigation all the
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`way from institution through to conclusion.” SAS, 138 S. Ct. at 1357.
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`Simply put: Apple only properly raised one ground for unpatentability against
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`element 37b. That ground was correctly rejected by the Board. Thus, the Board’s
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`finding, confirming the patentability of claim 37, must stand.
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`Moreover, even if Apple had properly raised its newly-asserted ground, it
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`would fail. Apple asserts that the claimed “oscillator voltage” corresponds to the “30
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`volt scan pulses” received at Chiu’s keypad rows. Reply, 18-19. However, those
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`pulses only reach 30V after they are “amplif[ied]” by the “driver circuit 92,” which
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`sits downstream of the TMS 1670 microprocessor. Ex. 1005, 9:15-25. Apple’s
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`Petition clearly identifies Chiu’s “oscillator” as the “signal generator circuitry” of its
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`“microprocessor 90” (i.e., the TMS 1670). Petition, 23-26. Thus, the relevant
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`“oscillator voltage” in Chiu is the voltage output by the microprocessor 90. Id., 29.
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`Meanwhile, Apple asserts that the “supply voltage” to the microprocessor is the 16V
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`“VDD” taught by Schwarzbach. Reply, 19.
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`Thus, to show that element 37b is satisfied, Apple must show that the voltage
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`output by the microprocessor 90—as opposed to the voltage output by the driver
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`circuit 92—is greater than 16V. Apple has not made such a showing. Apple’s expert
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`admitted that Chiu does not disclose the voltage output by the microprocessor. Ex.
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`2003, 259:18-260:18. He further admitted that this voltage must “absolutely” be
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`“less than 30 volts,” because otherwise, it would not need to be “amplified” to 30V.
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`Ex. 2003, 195:11-22, 199:13-200:18. Thus, all that is known is that Chiu’s
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`“oscillator voltage” is less than 30V. Since it is less than 30V, it could also be less
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`than 16V—in which case, it would not satisfy element 37b.
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`Apple has not shown that the output voltage of Chiu’s TMS 1670 is greater
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`than its purported “supply voltage” of 16V. Thus, Apple has not met its burden of
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`proof, and the patentability of claim 37 must be confirmed.
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`F. Neither Chiu Nor Schwarzbach Teaches Element 94f
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`The parties dispute the proper construction of “peak voltage” in element 94f.
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`Nartron asserts that this refers to the peak voltage output by the “microcontroller.”
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`POR, 47. Apple asserts that it refers to the peak voltage provided to the claimed
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`“touch terminals”—even if that voltage is only achieved by amplification after the
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`signal leaves the microcontroller. Petition, 51-53; Reply, 21-23. If Nartron is correct,
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`then Apple has not met its burden of proof, because it has not shown that the “peak
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`voltage of the signal output frequencies is greater than a supply voltage.”
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`Nartron’s construction is correct. Claim 94 recites that “[t]he microcontroller
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`selectively provid[es] signal output frequencies.” Thus, the “signal output
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`frequencies” are “provided by”—i.e., output from—the microcontroller. Apple’s
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`Petition uniformly identifies the “microcontroller” in Chiu as the TMS 1670
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`processor. Petition, 49-51. Thus, in Chiu, the “peak voltage of the signal output
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`frequencies” is the peak voltage output by the TMS 1670 processor.
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`Apple asserts that the claimed “signal output frequencies” corresponds to the
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`amplified signal from Chiu’s driver circuit 92, because the ‘183 patent discloses a
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`“buffer circuit” which amplifies a signal “from 5V to 26V.” Reply, 22-23. However,
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`in the ‘183 patent, the “buffer circuit” is part of the oscillator itself. The oscillator
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`200 comprises a 5V square wave generator 210, followed by a buffer circuit 230,
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`which boosts the square wave to 26V. Ex. 1001, 13:32-40. As seen in Fig. 11, all of
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`this equipment precedes the microcontroller 500 in the signal chain. Thus, the ‘183
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`patent merely discloses an amplification that occurs in the oscillator, before the
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`oscillator signal is sent to the microcontroller. The ‘183 patent never discloses an
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`amplification that occurs after the scan signal is sent from the microcontroller, but
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`before it arrives at the touchpad, as in Chiu. Thus, there is no support for Apple’s
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`construction in the ‘183 patent, and Apple’s Petition fails against element 94f.
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`G. Apple Has Failed to Prove Obviousness of Claim 101
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`Apple asserts that the “battery voltage” in claim 101 need not power the
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`microcontroller to scan the keypad. Reply, 23-24. According to Apple, a backup
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`battery, which merely protects data in volatile memory, satisfies this limitation.
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`Apple is incorrect. The ‘183 specification discloses only one use of a
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`“battery:” i.e., that a “DC battery is used” to “power the oscillator 200.” Ex. 1001,
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`13:23-31. Since the only “battery” disclosed in the specification powers the scan
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`signals, the “battery voltage” in the claims should also power the scan signals.
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`Moreover, in claim 101, the “battery supply voltage” is compared against the
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`“peak voltage of the signal output frequencies.” It would not make sense for the
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`voltage of the “signal output frequencies”—i.e., the signal output by the
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`microcontroller—to be compared to the voltage of a volatile-memory backup
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`battery. Rather, the comparison must be between the voltage of the
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