Ex. 2004
`Filed: November 4, 2019
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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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`____________________
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`Case IPR2019-00359
`Patent No. 5,796,183
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`____________________
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`DECLARATION OF DR. DARRAN CAIRNS
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`1738402
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`Filed: November 4, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLE, INC.
`Petitioner
`
`v.
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`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`____________________
`
`
`Case IPR2019-00359
`Patent No. 5,796,183
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`____________________
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`DECLARATION OF DR. DARRAN CAIRNS
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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` I, Darran Cairns, declare as follows:
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`Case IPR2019-00359
`Patent No. 5,796,183
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`1. My name is Dr. Darran Cairns. I am a Director of Program Operations
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`and Faculty Member in the School of Computing and Engineering at the University
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`of Missouri Kansas City. I am also an Adjunct Professor of Mechanical and
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`Aerospace Engineering at West Virginia University, where I have served on the
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`faculty since 2006.
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`2.
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`I have been retained by UUSI, LLC d/b/a Nartron (“Patent Owner” or
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`“Nartron”) as an independent expert in the above-captioned proceeding, IPR2019-
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`00359, before the Patent Trial and Appeal Board (“PTAB” or “Board”).
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`3.
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`I have been asked to review and opine on Apple’s Petition for Inter
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`Partes Review, Case No. IPR2019-00359 (“Petition”), of U.S. Patent No. 5,796,183
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`(“the ’183 Patent”), the Declaration of Dr. Phillip Wright submitted in support of
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`that Petition, and the Board’s decision to institute review in this case. I have also
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`been asked to explain the technology described, and the invention claimed, in U.S.
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`Patent No. 5,796,183 and the two Reexamination Certificates issued for that patent.
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`Finally, I have been asked to consider and describe the prior art cited in the IPR.
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`4.
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`I am being compensated at a rate of $490/hour for my work. I have no
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`other interest in this proceeding. My compensation is in no way contingent on the
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`nature of my findings, the presentation of my findings in testimony, or the outcome
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`of this proceeding.
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`BACKGROUND AND QUALIFICATIONS
`5.
`As stated above, I am a Director of Program Operations and a Faculty
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`Case IPR2019-00359
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`I.
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`Member in the School of Computing and Engineering at the University of Missouri
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`Kansas City. I am also an Adjunct Professor of Mechanical and Aerospace
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`Engineering at West Virginia University. I was an Associate Professor with Tenure
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`at West Virginia University until August 2014.
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`6.
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`I hold an undergraduate degree in Physics (1995) and a Ph.D. in
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`Materials Science and Engineering (1999) from the University of Birmingham in the
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`United Kingdom. From 1998 to 2001, I was a postdoctoral research associate in the
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`Display Laboratory at Brown University. While at the University of Birmingham, I
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`performed research related to optical fibers and optical sensors, and worked closely
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`with engineers at Pirelli Cables. During my time at Brown University, I performed
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`research on optoelectronic and display devices, including flexible electronics,
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`conformable displays, encapsulated liquid crystal devices, and touch sensors.
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`7.
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`At West Virginia University, my research focused on the fabrication of
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`flexible electronic devices. My work was funded by federal agencies, including the
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`National Science Foundation, NASA, the Air Force Office of Sponsored Research,
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`and the Department of Energy, and by private companies, including EuropTec USA,
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`Grote Industries, Kopp Glass, Eastman Chemical, and Articulated Technologies. I
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`have worked closely with engineers at each of these companies, and assisted them
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`in developing and commercializing electronic devices, including electronic lighting
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`for automotive use and flexible backlights for displays.
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`8.
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`In my own research, I am developing patented technologies on
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`functional coatings for electronic and energy applications. I am a named inventor on
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`11 U.S. patents in the field of touch sensors, displays, and liquid crystal materials.
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`9.
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`Prior to joining the faculty at West Virginia University, I worked for
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`five years as a Research Specialist at 3M Touch Systems. My research there focused
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`on capacitive touchscreen applications. My work at 3M included the development
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`of patented and proprietary technologies on capacitive touch sensors.
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`10.
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`I am a member of the Society of Information Display (SID), the
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`Institute of Physics (IOP) and the American Society of Mechanical Engineers.
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`11. My students have been awarded prestigious fellowships for work
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`performed in my laboratory, including NSF Graduate Fellowships (3 students),
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`NDSEG Fellowship (1 student) and the RUBY graduate Fellowship (1 student).
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`12. My curriculum vitae, attached as Appendix 1, lists more than 79
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`scientific publications in journals, books, and peer-reviewed conferences, as well as
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`invited presentations on my work in polymer materials for electronic devices.
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`II. MATERIALS REVIEWED
`13.
`In preparing this Declaration, I have reviewed at least the following
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`materials:
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`a. All materials specifically identified in this Declaration;
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`b. All materials identified as having been reviewed in my prior
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`Declaration in this case, dated 5/6/2019 (IPR2019-00359, Ex. 2002);
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`c. The Federal Circuit’s decision in Samsung Elecs. Co. v. UUSI, LLC,
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`775 F. App'x 692 (Fed. Cir. 2019);
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`d. The ‘183 Patent (IPR2019-00359, Ex. 1001);
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`e. Apple’s Petition for Inter Partes Review of the ‘183 Patent (IPR2019-
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`00359, Paper 2);
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`f. Excerpts from the Prosecution History of the ‘183 Patent (IPR2019-
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`00359, Ex. 1002);
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`g. The Declaration of Phillip Wright, submitted in support of Apple’s
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`Petition for Inter Partes Review (IPR2019-00359, Ex. 1003);
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`h. The prosecution history of Reexamination Control No. 90/012,439
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`(IPR2019-00359, Ex. 1006);
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`i. The prosecution history of Reexamination Control No. 90/013,106
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`(IPR2019-00359, Ex. 1007);
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`j. U.S. Patent No. 4,561,002 to Chiu (“Chiu”) (IPR2019-00359, Ex.
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`1005);
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`k. U.S. Patent No. 4,922,061 to Meadows (“Meadows”) (IPR2019-00359,
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`Ex. 1013);
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`l. U.S. Patent No. 4,418,333 to Schwarzbach (“Schwarzbach”) (IPR2019-
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`00359, Ex. 1014);
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`m. U.S. Patent No. 4,731,548 to Ingraham (“Ingraham ’548”) (IPR2019-
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`00359, Ex. 1016);
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`n. U.S. Patent No. 4,308,443 to Tucker (“Tucker”) (IPR2019-00359, Ex.
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`1019);
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`o. U.S. Patent No. 4,328,408 to Lawson (“Lawson”) (IPR2019-00359, Ex.
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`1032); and
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`p. The other U.S. patents cited by Apple, but not actually relied upon to
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`form the basis for a proposed rejection (i.e., IPR2019-00359, Exs. 1004,
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`1008-1012, 1015, 1018 and 1020-1031).
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`III. PERSON OF ORDINARY SKILL IN THE ART
`14.
`I have been informed that factors relevant to determining the level of
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`ordinary skill in the art include: the educational level of the inventor; the type of
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`problems encountered in the art; the prior art solutions to those problems; the
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`rapidity with which innovations are made; the sophistication of the technology; and
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`the educational level of active workers in the field. On this basis, one of ordinary
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`skill in the art of capacitive touch sensors would have had at least a bachelor’s degree
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`in physics or electrical engineering, or equivalent industry experience in the field.
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`IV. OVERVIEW OF THE ‘183 PATENT
`15. The ’183 Patent, issued in 1998, is exemplary of the efforts that I
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`understand Nartron undertook as a pioneer in touchscreen technology. The ’183
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`Patent builds upon and provides significant improvements over prior Nartron patents
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`invented by Ronald D. Ingraham, including Ingraham ’735 and Ingraham ’548,
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`which Apple asserts in its IPR Petitions. Filed over 20 years ago, the ’183 Patent
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`provides a foundation upon which today’s touch screen technology is built. See
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`Samsung v. UUSI, IPR2016-00908, Ex. 1014 at 1.
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`16. The ‘183 Patent has been cited at least 161 times by patents and patent
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`applications.
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`See
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`https://patents.google.com/patent/US5796183A/en#citedBy.
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`Many of these patents are assigned to well-known technology companies, such as
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`Cypress Semiconductor, Samsung Electronics, Touchscreen Technologies Inc.,
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`Microsoft, Nokia, and Intel. See Samsung v. UUSI, IPR 2016-00908, Ex. 2004.
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`17. The ’183 Patent issued on August 18, 1998 from an application filed on
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`January 31, 1996. The ’183 Patent has been reexamined twice. Ex. 1006-1007. Three
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`of the challenged claims, Claims 37, 38 and 39, were added during the first
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`reexamination. See Ex. 1001, Ex Parte Reexamination Certificate C1. The remainder
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`of the challenged claims were added during the second reexamination. See Ex. 1001,
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`Ex Parte Reexamination Certificate C2.. The ’183 Patent generally relates to a
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`capacitive responsive electronic switching circuit, including an oscillator providing
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`a periodic output signal, an input touch terminal defining an area for an operator to
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`provide an input by proximity and touch, and a detector circuit coupled to the
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`oscillator for receiving the periodic output signal from the oscillator, and coupled to
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`the input touch terminal. Ex. 1001 (Abstract).
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`18. Capacitive sensors at the time of invention (including the prior art
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`sensors cited in the Petition) were largely limited to use in kitchen appliances, such
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`as stoves and microwaves. Indeed, the filing date of the application (January 1996)
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`predates the release of the widely-used Palm Pilot 1000 in March 1996. The touch
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`screen interface for the Palm Pilot was a relatively crude resistive touch sensor that
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`was not capable of multi-touch input.
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`19.
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`In early 1996, when the application from which the ‘183 Patent issued
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`was filed, due to physical space constraints, there was a drive to make capacitive
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`touch keypads smaller and smaller, while increasing the number of touch terminals
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`on the keypad. Yet, a substantial barrier existed in that the more densely the touch
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`terminals were spaced, and the smaller the touch terminals became, the greater the
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`risk of coupling adjacent touch terminals, resulting in multiple actuations of touch
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`terminals when only a single one was desired. This problem is described in the
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`specification of the ‘183 Patent. See Ex. 1001, 3:64-4:8.
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`20. At the time of invention, the only way that was known to put touch pads
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`as closely together as possible was to use physical structures to prevent inadvertent
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`actuation of adjacent touch pads, or “crosstalk.” These physical structures included
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`guard rings, guard bands, or a combination of electrodes with opposing electric fields
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`(collectively referred to as “guard rings”), included as a part of each touch terminal.
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`Id. However, guard rings presented a barrier to developing a truly compact device,
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`because they require additional space and therefore limit the proximity and size of
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`the touch terminals. There was no known way to overcome this problem until the
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`invention disclosed and claimed in the ’183 Patent.
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`21. Today’s cell phones and tablets offer a rich user input interface in very
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`large part due to the innovations taught in the ’183 Patent. These devices require a
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`very closely spaced array of sensitive, small-sized, multi-touch input sensors, that
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`can be rapidly controlled using a microprocessor. In addition, these devices must be
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`able to recognize multi-touch gestures, and differentiate these gestures from noise,
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`contamination and unintentional touches. The ’183 Patent was the first to teach the
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`combination of all these things.
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`22.
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`In particular, the teachings of the ’183 Patent were crucial to the
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`elimination of the physical structures used in the prior art to prevent crosstalk
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`between adjacent input touch terminals. The teachings of the ‘183 Patent also
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`permitted an increase in touch terminal sensitivity, which allowed for a reduction in
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`the size of individual input touch terminals. In addition, the ’183 Patent teaches how
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`to minimize noise due to contaminants, by selecting oscillator frequencies that
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`decrease the relative impedance of conductive paths through the dielectric substrate,
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`relative to the impedance of contaminant paths. This is another critical contribution,
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`which is widely used in today’s cell phones and tablets. The ability to differentiate
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`between a full touch and a partial touch, and to reject unintentional actuations of
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`closely-spaced touch terminals, is essential to a capacitive screen’s ability to
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`recognize multi-touch gestures. Thus, the teachings of the ‘183 Patent have enabled
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`the rich, multi-touch user interfaces that have driven the rapid adoption of smart
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`phones, cell phones and tablets with capacitive sensors.
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`23. By eliminating the need for guard rings in a multi-touch pad
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`configuration, the ’183 Patent offers improvements in detection sensitivity, which
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`allow and enable employment of a multiplicity of small sized touch terminals in a
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`physically close array. Id., 5:53-57. This increased sensitivity is accomplished by:
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`(i) using an oscillator signal in combination with a floating common, operating at a
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`5-volts difference from the output of the oscillator, as a scan signal for the touch
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`input circuitry; and (ii) using high frequency signals (preferably greater than 800
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`kHz) to drastically reduce the impact of noise due to contaminants on the screen.
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`This innovative touch sensor design allows for input touch terminals to be very
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`small, and densely arranged together. With the use of a microprocessor to send the
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`oscillator signal to each of these small, closely-spaced input touch terminals, it was
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`possible to create, for the first time, a keypad we now see in cell phones and tablets.
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`24. Accordingly, the ’183 Patent paved the way for today’s touch screen
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`devices. The ’183 Patent achieves a high degree of detection sensitivity, without the
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`need for guard rings, in several ways, as described below.
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`25. First, the ’183 Patent offers “enhanced sensitivity” because it
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`minimizes “susceptibility to variations in supply voltage and noise” by the use of
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`high oscillator frequencies, and by “use of a floating common and supply that follow
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`the oscillator signal to power the detection circuit.” Id., 6:1-22; 18:66-19:6. The
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`floating common provides a reference that is only 5V away from the high-frequency
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`oscillator output signal, enabling the system to compare signals that are only 5V
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`apart. This 5V differential minimizes noise that otherwise would be generated due
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`to the presence of contaminants on the touch pad, such as liquid or skin oils. Id.,
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`4:18-20; 5:48-53; 16:12-24.
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`26. Second, the ’183 Patent achieves “enhanced sensitivity” by using an
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`oscillator that outputs a signal with a voltage that is as high as possible—e.g., a
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`26V-peak square wave—while still being low enough to obviate the need for
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`expensive components and testing to alleviate safety concerns. Id., 6:6-13; 12:6-23.
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`27. Third, the ’183 Patent’s detection circuit “operates at a higher
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`frequency than prior art touch sensing circuits,” which “is not a benign choice”
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`relative to the prior art detection circuits. Id., 8:9-14. The ’183 Patent discloses
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`extensive testing that was performed in order to determine the optimal frequency
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`ranges. With reference to Figure 3A, the ’183 Patent discloses that tests were
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`performed to find the ideal frequency ranges that would provide a substantial enough
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`“impedance difference between the paths to ground of the touch pad 57 and adjacent
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`pads 59.” Id., 11:1-9. “This . . . result[s] in a much lower incidence of inadvertent
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`actuation of adjacent touch pads to that of the touched pad.” Id..
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`28. Thus, the ’183 Patent discloses a circuit with very high frequencies, a
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`floating common generator, and as-high an oscillator voltage as possible, so as to
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`bring the input touch terminals in closer proximity and make them smaller, while
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`still providing enhanced detection sensitivity, without the need for physical
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`structures like guard rings to isolate the touch terminals. Id., 8:9-11:60. A schematic
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`of the essential elements of an embodiment of the invention is shown in Figure 11:
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`29. The invention of the ‘183 Patent made a groundbreaking contribution
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`to the art. To my knowledge, no other device existed that provided the inventive
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`combination of closely-spaced input terminals with enhanced detection sensitivity.
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`To the contrary, the developments in the art at that time were focused on the use of
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`physical structures, such as guard rings, to reduce noise and crosstalk. Thus, the ‘183
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`Patent represented a marked departure from the prevailing approach at the time.
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`V.
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`SUMMARY OF THE CITED REFERENCES
`A. Chiu
`30. Chiu relates to a capacitive switch arrangement useful as a control panel
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`for major home appliances, such as microwave ovens. Ex. 1005, 1:65-2:2. Chiu
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`explains that, when a large number of touch pads were desired in a relatively small
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`area, the minimum electrode and touch pad areas required to provide sufficient
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`coupling capacitance presented a design limitation for the then-conventional
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`attenuator-type switch cells. Id., 6:3-8. In the then-conventional techniques upon
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`which Chiu sought to improve, the receiver and transmitter electrodes shared the
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`touch pad, so the touch pad area required to provide the minimum capacitance for
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`each of the series capacitances CT and CR (i.e., the capacitance between the touch
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`pad 16/16’ and the transmitter electrode 20/20’, and the capacitance between the
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`touch pad 16/16’ and the receiver electrode 22/22’, respectively) was more than
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`twice that required for the transmitting or receiving electrode alone. Id., 6:9-14.
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`31. Chiu purportedly was able to reduce the touch pad size by more than
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`50%, without sacrificing coupling capacitance, by removing the transmitter
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`electrode from the substrate, and replacing it with a discrete capacitor separate from
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`the touch pad and the receiver electrode. This arrangement allowed the touch pad
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`area to be reduced to the area of the receiver electrode alone, without reducing the
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`resulting receiver capacitance. Id., 6:15-30. Figs. 5A-5B schematically illustrate the
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`outer face of a dielectric substrate 44 according to this arrangement:
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`32. Each touch pad 42 has an associated conductive path 56, which extends,
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`substantially parallel to the horizontal rows of touch pads, to an associated terminal
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`point 60. Separate discrete capacitors 52 are provided, such that one capacitor is
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`associated with each touch pad. On the opposite side of the substrate 44, receiver
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`electrodes/pads 48 are provided, with one for each touch pad. Each of the receiver
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`electrodes is placed in an area overlying and bounded by the area of its associated
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`touch pad 42. The receiver electrodes 48 in each column are serially connected
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`together by a conductive path 49, with each column of receiver electrodes being
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`coupled to the signal detection circuitry 58. Id., 7:1-35.
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`33. To prevent erroneous operation, which might result from inadvertent
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`touching of the conductive paths 56, a second plurality of conductive paths 70 are
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`formed on the outer surface of the substrate 44. The second paths 70 are placed
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`sufficient close to the first paths 56 so that a human touch to one path ordinarily
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`would involve a touch to the other path in the pair. Each of the paths 70 is connected
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`to a terminal point 72, which is electrically connected through the substrate to
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`terminal points 71. The terminal points 71, in turn, are connected to a capacitor
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`network 74 via conductive runs 73. Paths 70 function as a “pseudo-touch pad.” Id.
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`(7:36-67). Detection circuitry 58 ensures that detection of an attenuated signal at the
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`output terminal 84 of capacitor network 74 takes priority over any other input to the
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`detection circuitry. And, because the relative positioning of conductive paths 56 and
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`70 is such that touching of one of runs 56 ordinarily would be accompanied by
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`touching one of the runs 70 as well, the control system does not respond to
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`inadvertent touching of any other panel except the touch pads.
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`34. Fig. 6A shows Chiu’s control circuit:
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`35.
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`In operation, Chiu’s microprocessor 90 sequentially generates a scan
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`pulse for each row shown in Figs. 5A-5B, and a separate test signal is generated,
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`simultaneously with each scan pulse, to address the erroneous signal detection issue
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`discussed above. Id., 8:45-55. When a particular cell is touched, the signal detection
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`circuitry 58 senses the attenuated scan signal at that cell’s column line 49. Id. The
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`signal detection circuitry then notifies the microprocessor 90 of the touch. Id.
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`B.
`Schwarzbach
`36. Schwarzbach discloses an appliance control system for providing
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`communication between a central control unit and remote slave units over common
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`power lines, such as a building’s power supply. Ex. 1014, 1:7-13, 2:3-6. The
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`appliance control system includes a central control unit, and a number of slave units,
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`each including a user-programmable microprocessor. Appliances and light fixtures
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`are plugged into respective slave units, which are plugged into outlet sockets of a
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`power main in a building. In operation, the system permits manual or automatic
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`transmission of command signals and status request signals from the central control
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`unit to the individually addressed slave units, and the transmission of status signals
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`from the slave units to the central control unit. Id., Abstract.
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`37. The central control unit includes a display panel, which is coupled to a
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`microprocessor, and a mechanical keyboard. Id. (4:28-29, 4:50-51). The keyboard
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`is connected as a 3×8 matrix, with its row pins 1 through 8 connected to
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`corresponding microprocessor output terminals. Key depresses are detected by
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`driving output terminals and scanning for closed keys. Specifically, the
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`microprocessor sequentially drives its output terminals to a high level for a set
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`interval. All keyboard pins are scanned once during each cycle of AC line voltage,
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`for simultaneously driving the keyboard rows and the displaying the panel character
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`terminals. During the time that a keyboard row pin is held high, the microprocessor
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`looks at its input wires to determine whether a key is closed. When a key closure is
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`detected, the microprocessor takes the appropriate action. Id., 4:55 to 5:1.
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`C. Lawson
`38. Lawson relates to microwave oven controllers. Lawson states that
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`controlling the operation of the (then) newly-released microwave oven had become
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`complex. Id., 1:19-21. Thus, its “main object . . . is to provide an oven controller
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`with extreme versatility, capable of operating in a time mode or in a temperature
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`mode.” Id., 2:3-5. Lawson also seeks to provide a controller that is simple to operate,
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`yet controls a complex sequence. Id., 2:9-11. With respect to the latter, Lawson
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`discloses an oven 20 having a controller with a capacitive touch panel 21. As shown
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`in Figure 2, the touch panel 21 includes a display 22, along with a number of LEDs
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`D16-D29 that output information relevant to operation of the microwave oven. Id.,
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`2:28-44. Lawson describes the function of its various pads and keyboard, noting that
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`different pad functions may have different effects on display modes, for instance, in
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`connection with a timed cooking example. See, e.g., id., 26:61-69, 27:1-25; Table 1.
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`D. Meadows
`39. Meadows discloses a capacitive touch panel system of the type used
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`with a pen or stylus. Ex. 1013, 1:12-15. The Meadows patent addresses
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`electromagnetic interference caused by the conductive coating on the faceplate and
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`the touch panel system, which generates electromagnetic noise that can make it
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`difficult to determine a touch location. Id. (1:51-63). As disclosed, Meadows reduces
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`susceptibility to electromagnetic noise by using a “lock-in type” signal demodulator
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`and low-pass filter. Id. (2:61-68). The signal demodulator, in response to a pseudo-
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`random number signal, employs a random frequency measurement signal with a
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`frequency between 150 kHz and 250 kHz, as reference for demodulating the positive
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`and negative differential output signal. Id. (2:61-64, 4:28-32). This signal is fed into
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`the low pass filter which provides, from the demodulated signal, a substantially
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`steady-state address signal, which corresponds to an average of the magnitude of the
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`current drawn through a bar electrode. Id. (2:64-68).
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`E.
`Ingraham ‘548
`40. Apple’s six petitions for IPR cite three patents granted in the name of
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`Ingraham: U.S. Patent Nos. 4,731,548 (Ex. 1016); 4,758,735 (Ex. 1017); and
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`5,087,825 (Ex. 1025). Each of these three Ingraham patents was invented by a
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`Nartron engineer, and was considered during prosecution of the ’183 Patent. The
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`latter two Ingraham patents—namely, Ingraham ’735 and Ingraham ’825 (Ex. 1017
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`and 1025, respectively)—are extensively discussed in the ’183 Patent. Ex. 1001
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`(3:44-50; 4:3-8; 5:43-50; 6:6-16; 8:11-18; 18:1-10). And both Ingraham ’548 and
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`Ingraham ’825 were cited in, and relied upon, in the Samsung IPR.
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`41. Like the later Ingraham patents, Ingraham ’548—the earliest of these
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`three Ingraham patents—discloses a touch control switch circuit. Ex. 1016, Abstract.
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`Ingraham ’548 in particular improves reliability of touch-controlled switching
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`circuits, since it does not rely upon induced voltage for its operation. Rather, in
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`Ingraham ’548, the body capacitance of the person actuating the switch is coupled
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`into a voltage-dividing circuit, which is used to provide a logic output signal for a
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`DC trigger level applied to a Triac, or other bilateral solid-state switch, coupled
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`between the line voltage source and a load to be controlled. By utilizing a direct
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`current control signal for the solid-state switch, the switch is rendered conductive
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`near the beginning of each half-cycle of operation, and remains conductive during
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`each half cycle of operation. Thus, through a DC gate signal, inductive loads such
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`as fluorescent lights and motors may be controlled. Id., 1:38-66.
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`F.
`Tucker
`42. Tucker discloses a cooktop induction heating system with touch control
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`pads for electrically energizing induction heating coils. A “microprocessor circuit
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`receives as input signals the control signals generated by touch input circuit.” Ex.
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`1019, 7:33-35; Figs. 3 and 5. These signals are applied to the microprocessor circuit,
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`with the output from the microprocessor circuit indicating that a particular touch
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`control pad has been touched. Id., 7:35-43. Additionally, Tucker discloses various
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`software flow diagrams that the processor can execute to operate the cooktop
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`controls. See id., 16:52-54; Fig 10 (describing the software flow diagram for the
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`basic program architecture of microprocessor circuit 82). Tucker, like Ingraham
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`’548, was considered during prosecution of the ’183 Patent.
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`VI. CLAIM CONSTRUCTION
`A. Legal Standard
`43.
`I understand that the claim construction standard in this case is set forth
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`in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). I understand that, under
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`Phillips, claims should generally be given “their ordinary and customary meaning,”
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`as understood by “a person of ordinary skill in the art in question at the time of the
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`invention.” Id. at 1312-1313. I understand that the most important source of meaning
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`is “the words of the claims themselves.” Id. I understand that the second-most
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`important source is the specification. Id. at 1315. I understand that the third-most
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`important source is “the patent’s prosecution history.”
`
`B.
`44.
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`“Selectively Providing Signal Output Frequencies”
`In this case, Apple asserts that claims 27, 28, 32, 36, 83-88, and 90-93
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`(the “challenged claims”) are obvious over the prior art. All challenged claims recite
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`a “microcontroller selectively providing signal output frequencies to a closely
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`spaced array of input touch terminals.”
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`45. On June 18, 2019, the Federal Circuit issued a decision in Samsung
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`Elecs. Co. v. UUSI, LLC, 775 F. App'x 692 (Fed. Cir. 2019) (the “Samsung appeal”).
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`I understand that the Samsung appeal was an appeal from the Board’s final written
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`decision in IPR2016-00908, which Samsung had filed against claims 37-41, 43, 45,
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`47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 of the ‘183 Patent.
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`I understand that, in IPR2016-00908, the Board issued a Final Written
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`46.
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`Decision, finding that Samsung failed to prove obviousness of any claim challenged
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`in that IPR. The Board specifically found that Samsung failed to prove: (i) a
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`motivation to combine the cited references; and (ii) a reasonable expectation of
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`success in combining those references, to achieve the claimed “selectively providing
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`signal output frequencies” limitation. I submitted two Declarations in support of
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`Nartron’s positions in IPR2016-00908.
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`47.
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`I understand that Samsung appealed the Board’s Final Written Decision
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`to the Federal Circuit. I understand that, in the appeal, the Federal Circuit reversed
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`the Board’s finding that there was no motivation to combine. I understand that the
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`Federal Circuit also vacated the Board’s finding of no reasonable expectation of
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`success, and remanded to the Board for further proceedings on that issue.
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`48.
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`I understand that the Federal Circuit’s decision to reverse the Board on
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`reasonable expectation of success was based on the Federal Circuit’s construction of
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`the claim term “selectively providing signal output frequencies.” The Federal
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`Circuit’s Opinion expressly stated that its decision was “a legal determination
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`regarding claim construction,” and that “[r]easonable expectation of success . . . rests
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`on claim construction.” Samsung, 775 F. App’x at 696. Thus, I understand that the
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`Federal Circuit issued a claim construction of “selectively providing signal output
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`frequencies” in the Samsung appeal, and that that construction was central to the
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`Federal Circuit’s decision to remand to the Board.
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`49. Specifically, I understand
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`that
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`the Federal Circuit construed
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`“selectively providing signal output frequencies” to mean “‘provid[ing]’ a
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`frequency, selected from multiple possible frequencies, to the entire touch pad.”
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`Samsung, 775 F. App’x at 697.
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`50.
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`I have been advised by counsel that the Board is obligated to follow
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`claim constructions issued by the Federal Circuit, even if the construction is issued
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`in a different case. Thus, I understand that the Board must construe “selectively
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`providing signal output frequencies” consistently with the Federal Circuit’s
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`construction, to require providing a frequency, selected from multiple possible
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`frequencies, to the touch pad.
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`51. The Federal Circuit’s construction is consistent with the construction
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`that I proposed for this term in my prior Declaration. See IPR2019-00359, Ex. 2002,
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`¶¶ 43-48. Previously, I proposed to construe “selectively providing signal output
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`frequencies” to mean “selectively sending signals selected from various frequencies
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`available from a microcontroller to the input touch terminals.” Id., ¶ 43. This is
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`consistent with the Federal Circuit’s construction of “providing a frequency, selected
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`from multiple possible frequencies, to the touch pad.” Thus, the Federal Circuit’s
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`Samsung construction is consistent with my prior construction.
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`52. The Federal Circuit’s construction of “selectively provi
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