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 IPR2019-00359
`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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`1817335
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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 IPR2019-00359
`Patent No. 5,796,183
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`____________________
`
`
`PATENT OWNER’S SUR-REPLY BRIEF
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`
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`1817335
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`Case IPR2019-00359
`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” ........................... 13
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`D. Apple Has Not Proven a Reasonable Expectation of Success in
`Combining Chiu and Schwarzbach ..................................................... 14
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`E.
`
`F.
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`Neither Chiu Nor Schwarzbach Teaches Element 83d ....................... 15
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`Apple Has Failed to Prove Obviousness of Claim 90 ......................... 16
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`G. Apple Failed to Prove Obviousness of Claims 86-88 Over Chiu,
`Schwarzbach, and Meadows ............................................................... 17
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`III. CONCLUSION .............................................................................................. 22
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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 14-19, 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 was incorrect 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 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 as “nonprecedential.” Reply, 2. But the Federal Circuit permits parties to
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`cite its non-precedential decisions. Fed. Cir R. 32.1(c). Moreover, lower tribunals
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`routinely follow non-precedential Federal Circuit decisions. See, e.g., Permacel
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`Kansas City, Inc. v. Soundwich, Inc., 2006 WL 1449979 at *3 (W.D. Mo. 2006)
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`(following non-precedential Federal Circuit decision because “[i]t would … be
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`reckless, to say the least, for me to rule in a manner inconsistent with an unpublished
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`opinion of a panel of the reviewing court”); General Protecht Group, Inc. v. Leviton
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`Manufacturing Co., 2015 WL 4988635, *16 (D.N.M. 2015) (following non-
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`precedential Federal Circuit opinion because “[t]he Court will take whatever
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`guidance it can get from the Federal Circuit.”)
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`Tribunals are particularly apt to follow non-precedential Federal Circuit
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`decisions involving the same patents and claim terms at issue. See, e.g., Aspex
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`Eyewear, Inc. v. Concepts In Optics, Inc., 211 F. App’x 955, 957 (Fed. Cir. 2007)
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`(electing to “adopt[] the claim construction made by another panel of this court with
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`respect to the same limitation in other claims of the ‘545 patent,” because “claim
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`construction is a question of law”); Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183
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`F.3d 1334, 1338 (Fed. Cir. 1999) (adopting claim construction in non-precedential
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`opinion, “[b]ecause the same claim of the same patent is at issue in this case.”).
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`Moreover, 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 now before the Board. Thus, “[i]t would ... be reckless, to say the
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`least, for [the Board] to rule in a manner inconsistent with an unpublished opinion
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`of a panel of [its] reviewing court.” Permacel, 2006 WL 1449979 at *3. The Federal
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`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, 28-30.
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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 86 coextensive with claim 83. Id. Apple is mistaken.
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`Claim 83 recites “the microcontroller selectively providing signal output
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`frequencies to ... a keypad.” Per the Federal Circuit’s construction, this requires the
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`microcontroller to “provide a frequency, selected from multiple possible
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`frequencies, to the entire touchpad.” Samsung, 775 Fed. App’x at 697. Claims 85
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`and 86 further limit claim 83. Claim 85 requires that the “signal output frequencies”
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`that are actually provided to the keypad have “a same Hertz value”—i.e. that only
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`one frequency is actually “provided.” Claim 86 requires that “each signal output
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`frequency” that is actually provided is “selected from a plurality of Hertz values”—
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`i.e., that multiple different frequencies are actually provided to the touchpad. Thus,
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`claims 85 and 86 further limit claim 83 under the Federal Circuit’s construction,
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`because claim 83 merely requires a selection from among “multiple possible
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`frequencies,” whereas claims 85-86 recite limitations regarding whether one
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`frequency, or multiple frequencies, are actually provided to the keypad.
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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) (construing
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`“selecting a first area” to encompass selection by either a human or a computer);
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`PaymentOne Corp. v. PayPal, Inc., No. 11-CV-02186-YGR, 2013 WL 4008829, at
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`*9 (N.D. Cal. Aug. 2, 2013) (construing “selectively routing” to encompass routing
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`done with “human intervention”) Ampex Corp. v. Eastman Kodak Co., 460 F. Supp.
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`2d 541, 557 (D. Del. 2006) (construing “selectively generating” to include selection
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`by either “the system or the user”). 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 of the proximal
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`and distal segments ‘are selected to facilitate a placement of the tubular wall.’” Id.
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`The parties disputed whether this required the “selection” be performed by the
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`stent’s user or its designer. Id. The court concluded, based on the claims and the
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`specification, that the “selection” is performed by the stent designer. Id. Thus, the
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`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 27-28; POR, 19-21. The specification teaches that a circuit
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`designer, constructing an embodiment of the invention, can select different “values
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`of the resistors and capacitors utilized in oscillator 200 … to provide for different
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`oscillator output frequencies.” Ex. 1001, 14:22-33. Apple’s own expert admits that
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`the claims encompass a selection of frequencies that “take[s] place during the design
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`phase.” Ex. 2003, 254:19-255:8. Thus, as in Bos. Sci., the challenged claims
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`encompass a “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) (written description satisfied if “the
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`specification … demonstrates that the applicants had possession of an embodiment
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`that” meets the claims) (emphases added). 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 permit changing frequencies on-the-fly. Id., ¶¶ 67-74. Dr. Cairns then identified a
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`number of commercially-available components which a POSITA could have used to
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`perform these functions. Id. While the specification does not expressly identify any
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`of these components, “the minutiae of descriptions or procedures perfectly obvious
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`to one of ordinary skill in the art … need not be set forth.” Application of Eltgroth,
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`419 F.2d 918, 923 (CCPA 1970). The identification of particular commercially-
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`available resistors, capacitors, etc. is a “known detail” which “need not be included
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`in a patent 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, 31-32. 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, 31-34. 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, 23-25. 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.” Reply, 13.1 That is irrelevant. Apple’s burden
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`was to show that Chiu discloses “providing a frequency, selected from multiple
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`possible frequencies, to the entire touch pad.” Samsung, 775 Fed. App’x at 697.
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`Apple has not met that burden. Thus, because the “selectively providing” term
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`1 Apple purports to cite Chiu, at 2:27-30, for the proposition that “different
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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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`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, 37-39. 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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`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. Neither Chiu Nor Schwarzbach Teaches Element 83d
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`The parties dispute the proper construction of “peak voltage” in element 83d.
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`Nartron asserts that this refers to the peak voltage output by the “microcontroller.”
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`POR, 44. 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, 45-46; Reply, 19-21. 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 83 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, 27-30. 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, 19-21. 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 83d.
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`F. Apple Has Failed to Prove Obviousness of Claim 90
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`Apple asserts that the “battery voltage” in claim 90 need not power the
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`microcontroller to scan the keypad. Reply, 21-22. 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 90, 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 battery that
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`powers the “signal output frequencies,” and the voltage of those “frequencies.”
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`Under the proper construction, the claimed “battery supply voltage” must
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`power the claimed operations of the microcontroller, including the generation of
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`“signal output frequencies.” Apple has adduced no evidence that Schwarzbach’s
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`volatile-memory backup battery could power such operations. Thus, Apple has not
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`met its burden of proof, and claim 90 should be confirmed.
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`G. Apple Failed to Prove Obviousness of Claims 86-88 Over Chiu,
`Schwarzbach, and Meadows
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`The Board correctly found that Apple failed to prove obviousness of claims
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`86-88 over Chiu, Schwarzbach, and Meadows. Decision, 50-58. Apple argues that
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`the Board erred. Reply, 22-25. Apple is mistaken.
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`First, Apple asserts that Board improperly based its decision on whether
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`Meadows’s voltage-controlled oscillator could be “bodily incorporated” into Chiu.
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`Reply, 22-23. This is not true. The Board expressly noted that “bodily incorporation”
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`is not the correct standard for obviousness. Decision, 55-56. The Board did not hold
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`that Apple’s Petition was defective because it failed to prove “bodily incorporation.”
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`Id. Rather, it held—correctly—that Apple’s Petition is defective because it does “not
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`explain[] adequately how a skilled artisan would have made the proposed
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`combination,” and does “not explain[] adequately how the proposed combination is
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`supposed to work.” Id. Federal Circuit precedent required Apple to make both of
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`these showings (Pers. Web., 848 F.3d at 994), and Apple’s Petition clearly failed to
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`make either. Thus, the Board’s decision was correct.
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`Second, Apple asserts that a POSITA could incorporate Meadows’s
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`“randomized frequency” technique into the Chiu-Schwarzbach system, without
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`making any changes to its “configuration and arrangement.” Reply, 23-24. That is
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`incorrect. Numerous changes would have to be made to Chiu-Schwarzbach in order
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`to successfully combine it with Meadows. POR, 51-53.
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`Moreover, Chiu’s system must be able to detect “by row and column which
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`touch pad has been touched.” Decision,55. But, the only thing Chiu’s signal
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`detection circuitry 58 actually detects is which column has been touched. Ex. 1005,
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`8:55-9:6. Chiu knows which row has been touched only because its microprocessor
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`knows which row was being scanned when a column touch was detected. Id., 10:45-
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`51. Thus, Chiu requires a mechanism for the microprocessor to know which row is
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`being scanned when a column-touch is detected.2 This becomes complicated once
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`the period of the scan pulse starts varying, as taught by Meadows.3 Apple’s Petition
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`2 Meadows requires no such mechanism, because Meadows uses continuous “bar
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`electrodes,” rather than an array of touchpads. Meadows, 2:14-26.
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`3 Apple asserts that Meadows’s pulse duration never changes during a scan cycle
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`(Reply, 24), but Meadows says no such thing. Meadows merely states that it changes
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`pulse duration “at a frequency of about 50 kHz,” while the scan frequency ranges
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`“between 150 and 250 KHz.” Meadows, 4:29-35. If the scan frequency is anything
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`makes no effort to explain how the row-column detection of Chiu would work with
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`the varying scan pulse of Meadows. Thus, Apple has not met its burden of proof.
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`Third, Apple asserts that Nartron’s arguments regarding the written
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`description support for “selecting a frequency, from multiple possible frequencies”
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`establish that Apple’s combination of Meadows, Chiu, and Schwarzbach was
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`obvious. Reply, 24-25. Apple is wrong.
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`For one, the disclosure in the patent itself cannot be used as evidence that what
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`the patentee invented was obvious. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
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`F.2d 1540, 1553 (Fed. Cir. 1983). The ‘183 patent disclosed a novel switching circuit
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`in which a frequency is selected, from multiple possible frequencies, to optimize the
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`impedance of inductive paths through the touchscreen, relative to the impedance of
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`surface-contaminant paths. Nartron
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