`GiiesreiOiakesec/(17 Polafl
`
`UUSI, LLC D/B/A NARTRON
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`
`Plaintifis),
`
`Case No. 2:47-0w-13798
`
`¥.
`APPLE, ING.
`
`Judge Avern Cohn
`Magistrate Judge Stephanie Dawkins Davis
`
`Dafendantis}.
`
`/
`
`REPORT ON THE FILING OR DETERMINATION OF AN ACTION REGARDING A PATENT OR TRADEMARK
`
`in Compliance with 35 U.S.C, § 290 and/or 15. U/S.C. § 1115 you are hereby advised that a court action has been
`filed in the U.S. District Court, Eastern District of Michigan, on the following
`Patantsor
`["] Trademarks
`
`PATENT ORB
`TRADEMARK NO.
`
`DATE OF PATENT
`
`HOLDER OF PATENT OR TRADEMARK
`
`8/18/1998|Nartron Corporation
`
`| 5,796,183
`
`To list additional patentArademark numbers, please attach another page with the number, date and holder.
`
`Dale: November 22, 2017
`
`
`fsid MichaeiHuget
`P39150
`Honigman Miler Schwartz and Cohn LLP
`315 East Eisenhower Parkway
`Suite 100
`
`Ann Arbor, MI 48708
`(734) 448-4254
`mhugei@honigman.com
`
`1
`
`APPLE 1002
`
`1
`
`APPLE 1002
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS COMPANY, LTD.
`Petitioner
`
`Vv.
`
`UUSI, LLC d/b/a NARTRON
`Patent Owner
`
`Case IPR2016-00908
`Patent No. 5,796,183
`
`2
`
`
`
`ae
`oats
`
`PETITIONER’S NOTICE OF APPEAL
`
`2
`
`
`
`Case IPR2016-00908
`Patent 5,796,183
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioner
`
`Samsung Electronics Company, Ltd. (“Petitioner”) appeals to the United States
`
`Court of Appeals for the Federal Circuit from the Final Written Decision entered
`on October 18, 2017 (Paper 35) (the “Final Written Decision”) by the United
`
`States Patent and Trademark Office, Patent Trial and Appeal Board (the “Board”),
`
`and from all underlying orders, decisions, rulings, and opinions. A copy of the
`
`Final Written Decisionis attached.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner indicates that the
`
`issues on appealinclude,but are not limited to, the Board’s rulingthat Petitioner
`
`has not demonstrated, by a preponderanceof the evidence,that the claims of US.
`
`Patent No. 5,796,183 (“the ’183 patent”) are unpatentable over the prior art, and
`
`any findings or determinations supporting or related to that ruling including,
`
`without limitation, the Board’s interpretation ofthe claims andpriorart, reasons to
`
`combine and expectation of success, and the Board’s interpretation of expert
`
`evidence.
`
`3
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`
`
`Case IPR2016-00908
`Patent 5,796,183
`
`Simultaneous with this submission, a copy ofthis Notice ofAppealis being
`filed with the Board. In addition, the Notice of Appeal and the required fee are
`
`beingfiled electronically with the Clerk of Court for the United States Court of
`
`Appeals. for the Federal Circuit.
`
`Respectfully submitted this 18th day of December, 2017.
`
`
`By:_/Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
`
`Counselfor Petitioner
`
`4
`
`
`
`Case IPR2016-00908
`Patent 5,796,183
`
`CERTIFICATE OF SERVICE
`
`The undersignedcertifies that, in addition to being filed electronically
`
`through Patent Trial and Appeal Board End to End (PTAB E2E),the original
`
`version of this Notice of Appeal was filed by express overnight mail on December
`
`18, 2017 with the Director of the United States Patent and Trademark Office,at the
`
`following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`The undersignedalso certifies that a true and correct copy of this Notice of
`
`Appeal and the required fee were filed electronically via CM/ECF on December
`
`18, 2017, with the Clerk of Court for the United States Court of Appeals for the
`
`Federal Circuit.
`
`The undersigned also certifies that a true and correct copy of this Notice of
`Appeal was served on December18, 2017, on counsel ofrecord for Patent Owner
`
`UUSLLLC d/b/a Nartron by electronic mail (by agreementofthe parties) at the
`
`following address:
`
`Jay Kesan (jay@keyiplaw.com)
`Teresa M. Summer(teresa@keyiplaw.com)
`DiMuro Ginsberg PC-DGKeyIP Group,
`1101 King Street, Ste. 610
`Alexandria, VA 22314
`
`5
`
`
`
`Case IPR2016-00908
`Patent 5,796,183
`
`Date: December18, 2017
`
`By:_/Naveen Modi/
`
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
`
`Counselfor Petitioner
`
`6
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 35
`Entered: October 18, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICSCoO., LTD,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`Case IPR2016-00908
`Patent 5,796,183 -
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO,and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 USC. § 318(a) and 37 C.F.R. § 42.73
`
`7
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`I.
`
`INTRODUCTION
`
`SamsungElectronics Co., Ltd. (“Petitioner”) sought inter partes
`
`review of claims 37-41, 43, 45, 47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96,
`
`97, 99, 101, and 102 of U.S. Patent No. 5,796,183 (Ex. 1001, “the °183
`
`patent”), owned by UUSI, LLC d/b/a Nartron (“Patent Owner”). Paper 2
`
`(“Petition”or “Pet.”). Patent Ownerfiled a Preliminary Response. Paper 10
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`
`Response, weinstituted an inter partes review of claims 40, 41, 43, 45, 47,
`
`48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the
`
`“Instituted Claims”) pursuant to 35 U.S.C. § 314. Paper 12 (“Decision on
`
`Institution” or “Dec. on Inst.”). We did not institute, however, review of
`
`claims 37—39 because we determined Petitioner had not established a
`
`reasonablelikelihood that it would prevail with respect to those claims. Id.
`
`Duringthetrial, Patent Ownerfiled a Patent Owner Response
`
`(Paper 21, “PO Resp.”), and Petitioner filed a Reply thereto (Paper 24,
`
`“Reply”). An oral hearing was conducted on June 22, 2017. The record
`
`contains a transcript of the hearing (Paper 34,“Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6. The evidentiary standardis
`
`preponderanceof the evidence. See 35 U.S.C. § 316(e); see also 37 C.F.R.
`
`§ 42.1(d). This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`
`has not shown by a preponderance of the evidence that any ofthe Instituted
`
`Claims are unpatentable.
`
`Related Proceedings
`A.
`The 7183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
`
`8
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`IPR2016-00908
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`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014
`
`(“Reexam 2”). The Instituted Claims were added during Reexam 2. See
`
`generally Ex. 1006.
`The ’183 patent is the subject of ongoinglitigation betweentheparties
`in the Western District of Michigan: UUSI, LLC d/b/a Nartron v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No.
`1:15-cv-00146-JTN,originally filed on February 13, 2015 (W.D. Mich.)
`
`(the “District Court litigation”). Pet. 1. The District Court litigationis
`stayed and administratively closed until resolution ofthe instant interpartes
`review. Order, Case No. 1:15-cv-00146-JIN, Dkt. No. 62 (filed 05/02/16).
`
`B.
`
`The ’183 patent (Ex. 1001)
`
`The °183 patent relates to a “capacitive responsive electronic
`switching circuit used to makepossible a ‘zero force’ manualelectronic
`switch.” Ex. 1001, 1:6-9. According to the ’183 patent, zero force touch
`
`switches have no moving parts and no contact surfaces that directly switch
`
`loads. Id. at 1:40-41. Instead, such switches detect an operator’s touch and
`
`use solid state electronics to switch loads or activate mechanical relays. Jd.
`
`at 1:42-44. “A commonsolution used to achieve a zero force touch switch
`
`has been to make use of the capacitance of the human operator.” Jd. at 3:12-
`
`14. The 183 patent recites three methods used by capacitive touch switches
`
`to detect an operator’s touch, one of which relies on the change in capacitive
`
`coupling between a touch terminal and ground. Jd. at 3:14—15, 3:44-46. In
`
`this method, “[t]he touch of an operator then provides a capacitive short to
`
`groundvia the operator’s own body capacitance that lowers the amplitude of
`
`oscillator voltage seen at the touch terminal.” Jd. at 3:52-56. Significantly,
`
`the operator of a capacitive touch switch using this method need not come in
`
`9
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`IPR2016-00908
`Patent 5,796,183
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`conductive contact with the touch terminal. Jd. at 3:57-59. Rather, the
`
`operator needs only to comeinto close proximity of the switch. Id.
`
`Figure 11 of the °183 patent is reproduced below.
`
`300
`100
`
`
`FLOATING
`|
`
`
`|_| VOLTAGE
`COMMON
`
`OSCIMATOR =~) REGULATOR
`
`GENERATOR
`
`
`
`
`
`MICRO-
`
`CONTROLLER
`
`
`Figure 11 depicts a “multiple touch pad circuit” including “an array of
`touch circuits.” Jd. at 18:34-46. The ’183 patent recognizes that placing
`
`capacitive touch switches in dense arrays can result in unintended actuations.
`Id. at 3:65-4:3. One method ofaddressing this problem known in the art
`involves placing guard rings around each touch pad. Jd. at 4:4-10. Another
`
`known method of addressing this problem is to adjust the sensitivity of the
`
`touch pad such that the operator’s finger must entirely overlap a touch
`
`terminal. /d. at 4:10-14. “Although these methods (guard rings and
`
`sensitivity adjustment) have gone a considerable wayin allowing touch
`
`switches to be spaced in comparatively close proximity, a susceptibility to
`
`surface contamination remains as a problem.” /d. at 4:14-18.
`
`10
`
`10
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`IPR2016-00908
`Patent 5,796,183
`
`The ’183 patent seeks to overcome the problem of unintended
`
`actuation of small capacitive touch switches “by using the method of sensing
`
`body capacitance to ground in conjunction with redundant detection
`
`circuits.” Jd. at 5:33-35. Specifically, the ’183 patent’s touch detection
`
`circuit operates at frequencies at or above 50 kHz, and preferably at or above
`
`800 kHz, in order to minimizethe effects of surface contamination on the
`
`touch pads. Operating at these frequencies also improvessensitivity,
`
`allowing close control of the proximity required for actuation of small-sized
`
`touch terminals in a close array, such as a keyboard. Jd. at 5:48-57.
`
`C.
`
`© Illustrative Claim
`
`Independent claim 40 illustrates the claimed subject matter and is
`
`reproduced below.
`
`40. A capacitive responsive electronic switchingcircuit
`comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`a microcontroller using the periodic output signal from
`the oscillator, the microcontroller selectively providing signal
`output frequenciesto a plurality of small sized input touch
`terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
`output frequency to each row oftheplurality of small sized
`input touch terminals of the keypad;
`the plurality of small sized input touch terminals defining
`adjacent areas on a dielectric substrate for an operatorto
`provide inputs by proximity andtouch; and
`a detector circuit coupledto said oscillator for receiving
`said periodic output signal from said oscillator, and coupled to
`said input touch terminals, said detector circuit being
`responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupledto said touch terminals when
`
`11
`
`11
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`IPR2016-00908
`Patent 5,796,183
`
`proximal or touched by the operator to provide a control output
`signal,
`wherein said predefined frequency ofsaid oscillator and
`said signal output frequencies are selected to decreaseafirst
`impedanceofsaid dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`D.
`
`Cited References
`
`Petitioner relies on the following references:
`
`1. Ingraham, U.S. Patent No. 5,087,825, issued Feb. 11, 1992,
`
`(Ex. 1007, “Ingraham I’) along with portions of Ingraham, U.S.
`Patent No. 4,731,548, issued Mar. 15, 1988 (Ex. 1008, “Ingraham
`II”) incorporated by reference.
`
`2. Caldwell, U.S. Patent No. 5,594,222, issued Jan. 14, 1997
`
`(Ex. 1009, “Caldwell”).
`
`3. Gerpheide ef al., U.S. Patent No. 5,565,658, issued Oct. 15, 1996
`
`(Ex. 1012, “Gerpheide”).
`
`4. Wheeleret al., U.S. Patent No. 5,341,036, issued Aug. 23, 1994
`
`(Ex. 1015, “Wheeler’).
`
`E._—_Instituted Grounds of Unpatentability
`Weinstituted trial based on two grounds of unpatentability under
`_
`
`35 U.S.C. § 103(a) (Dec. on Inst. 31):
`
`12
`
`12
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`IPR2016-00908
`Patent 5,796,183
`
`Ingraham I, Caldwell,|40, 41, 43, 45, 61, 64-67, 69,
`Gerpheide
`83, 85, 86, 88, 90, 91, 94, 96,
`
`97, 99, 101, and 102
`
`
`
`
`47, 48, 62, 63, and 84
`
`
`
` Ingraham I, Caldwell,
`
`
`Gerpheide, Wheeler
`
`
`
`F.
`
`Testimony
`
`Petitioner supports its challenges with a declaration of Dr. Vivek
`
`Subramanian (Ex. 1002), filed contemporaneously with the Petition, and a
`
`rebuttal declaration of Dr. Subramanian (Ex. 1017), filed contemporaneously
`
`with the Reply. Dr. Subramanian testified further by deposition on
`
`. February 3, 2017, andatranscript of his testimony has been entered into
`
`evidence. Ex. 2009.
`
`Patent Ownerrebuts Petitioner’s challenges with a declaration of
`
`Dr. Darran Cairns (Ex. 2002), filed contemporaneously with the Preliminary
`Response, and an additional declaration of Dr. Cairns (Ex. 2010), filed
`contemporaneously with the Patent Owner Response. Dr. Cairnstestified
`further by deposition on April 21, 2017, and a transcript of his testimony has
`
`been entered into evidence. Ex. 1018.
`
`Il.
`
`ANALYSIS
`
`A.
`
`Principles ofLaw
`
`To prevail in its challenges to the Instituted Claims, Petitioner must
`
`demonstrate by a preponderanceofthe evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`
`unpatentable under 35 U.S.C. § 103(a)if the differences between the
`
`13
`
`13
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`IPR2016-00908
`Patent 5,796,183
`
`claimed subject matter and the priorart are such that the subject matter, as a
`whole, would have been obviousat the time of the invention to a person
`
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`406 (2007). The question of obviousnessis resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`
`the priorart; (2) any differences between the claimed subject matter and the
`priorart; (3) the level of ordinary skill in the art; and (4) where in evidence,
`so-called secondary considerations, including commercial success, long-felt
`but unsolved needs,failure of others, and unexpected results. Graham v.
`
`John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Citing testimony of its declarant, Dr. Subramanian,Petitioner
`
`contends that a person having ordinary skill in the art at the time of the
`invention would have had a minimum of: (1) a bachelor’s degree in
`electrical engineering, or equivalent thereof; and (2) “twoto three years of
`experiencein the relevant field, which includes touch systems technology.”
`
`Pet. 3 (citing Ex. 1002
`
`19).
`
`Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary
`
`skill “in the art of capacitive touch sensors would have hadat least a
`
`bachelor’s degree in physics orelectrical engineering or equivalent industry -
`
`experiencein the field.” Ex. 2002 4 14.
`
`Thelevels of ordinary skill proposed by the parties do not differ
`significantly. Both parties’ proposed descriptions require at least an
`undergraduate degreein electrical engineering or related technical field, and
`both valueindustry experience (although Petitionerquantifies this
`experience as two to three years). We adopt Petitioner’s proposed definition
`
`14
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`IPR2016-00908
`Patent 5,796,183
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`as more representative, but note that our analysis would be the same under
`
`either definition. We further find the level of ordinary skill in the art is
`
`reflected by the prior art of record. See Okajima v. Bourdeau,
`
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`C.
`Claim Construction
`The 183 patent expired on January 31, 2016. Pet 11; Prelim. Resp.7.
`Our review ofthe claims of an expired patent is “similar to that of a district
`court’s review,” wherein claim terms are given their ordinary and customary
`meaning as understood by a person ofordinary skill in the art at the time of
`the invention, as set forth by the Court in Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312-14 (Fed. Cir. 2005) (en banc). In re Rambus,Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012); see also Cuozzo Speed Techs., LLC v. Lee, 1368. Ct.
`2131, 2144-45 (2016). Any special definition for a claim term mustbeset
`
`forth in the specification with reasonableclarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner urges that we need not construe the termsofthe Instituted
`
`Claims. Pet 12. To the extent we construea particular term, Petitioner urges
`that we adopt the constructionsit proposed in the District Court litigation.
`Id. In its Preliminary Response, Patent Owner sought construction of three .
`
`sets of claim limitations, namely:
`1. “peak voltage ofthe signal output frequencies is greater than a
`supply voltage” as recited in each of independentclaims 61, 83,
`
`and 94 (hereinafter, the “supply voltage limitation”);
`
`2. “closely spacedarray of input touch terminals of a keypad,” as
`
`recited in each of independent claims 83 and 94 and “small
`
`15
`
`15
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`IPR2016-00908
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`sized input touch terminals of a keypad,”as recited in each of
`
`independent claims 40 and 61 (collectively, the “input touch
`
`terminals limitations”); and
`
`3. “selectively providing signal output frequencies,” as recited in
`
`each of independent claims 40, 61, 83, and 94.
`
`Prelim. Resp. 9-19.
`
`Wedeclined to adopt Patent Owner’s constructions of these
`
`limitations in our Decision on Institution. Dec. on Inst. 10-12. In so doing,
`
`we determined that one of ordinary skill in the art would understand the term
`“supply voltage”in the supply voltage limitation as referring to a supply
`voltage of the claimed microcontroller. Jd. at 10. Contrary to Patent
`Owner’s contention, we determined the claim language doesnotrestrict the
`
`supply voltage to exclude an external commercial power supply. Jd. We
`_ further determined in our Decision on Institution that the input touch
`
`terminals limitations do not preclude the presence of physical structures
`
`isolating adjacent touch terminals. Jd. at 10-11. Although we addressed
`Patent Owner’s proposed constructionsofthe limitations enumerated above,
`
`we did not construe further these limitations because additional construction
`
`wasnot necessary to our analysis on whetherto institute a trial. Jd. at 12.
`Neither party contests our construction of each limitation, as set forth
`in our Decision on Institution. PO Resp. 7; see generally Reply. Based on
`
`the full record developed during this proceeding, we find no need to depart
`
`from our constructions set forth above. Wealso find no need to construe
`
`further any terms ofthe Instituted Claims because further construction is not
`
`necessary to our analysis herein. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms in
`
`10
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`16
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`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy).
`
`D.—Obviousness based on Ingraham I, Caldwell, and Gerpheide
`
`Petitioner asserts each of independent claims 40, 61, 83, and 94
`
`would have been obvious over the combined teachings of Ingraham I,
`
`Caldwell, and Gerpheide. Pet. 39-49.
`1.
`Ingraham I (Ex. 1007) and Ingraham II (Ex. 1008)
`Ingraham I discloses a capacity response keyboard, which is depicted
`
`in Figure 1 reproduced below. Ex. 1007 at 2:19-20.
`
`Figure 1 showsa perspective view of Ingraham I’s capacity response
`keyboard, consisting of switches that respond to the change in capacity from
`a user touching the switch. Ex. 1007, 1:5-9. Each switch includes a touch
`plate assembly and a controlcircuit. Jd. at 2:28-35, Figs. 2,3. Each touch
`plate assembly includes a guard bandthat reduces interference between the
`switches. Id. at 2:46—49, Abstract. When a keyboard user touches the outer
`
`surface of the switch, the capacity-to-ground for the switch’s touch plate
`
`11
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`17
`
`17
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`IPR2016-00908
`Patent 5,796,183
`increases. Id. at 3:1-6, 3:21-47. This increase is detected by the switch’s
`touch sensingcircuit, which sends an outputsignal to a microcomputer. Jd.
`The ’183 Patent Specification makesseveral references to Ingraham I,
`including describing Ingraham I as operatingat relatively lower frequencies
`than the invention of the ?183 Patent. Ex. 1001, 8:11-14; see alsoid. at
`3:44-50, 4:3-8, 6:6-16, 18:1—-10. According to the *183 patent:
`The specific touch detection method of the present
`invention has similarities to the devices of U.S. Pat. No.
`4,758,735 and U.S. Pat. No. 5,087,825 [Ingraham I].
`However, significant
`improvements are offered in the
`means of detection and in the development of an overall
`system to employ the touch switches in a dense array and
`in an improved zero force palm button.
`The touch
`detection circuit of
`the present
`invention features
`operation at frequencies at or above 50 kHz and preferably
`at or above 800 kHz to minimize the effects of surface
`contamination from materials such a skin oils and water.
`
`Id. at 5:43-S3.
`
`Ingraham I incorporates by reference certain portionsofpriorart
`patent Ingraham IJ, upon whichPetitionerrelies as meeting certain
`limitations of the Instituted Claims. Pet. 9 (citing Ex. 1007, 3:21—24 as
`incorporating Ingraham II’s controlcircuit 14 (“A detailed description of
`control circuit 14 is provided in U.S. Pat. No. 4,731,548, issued Mar. 15,
`1988 to Ronald Ingraham, the disclosure of which is hereby incorporated
`
`herein by reference.”)).
`
`Caldwell (Ex. 1009)
`2.
`Caldwell discloses a touch pad system, including a touch sensorthat
`detects user contact, for use in kitchens. Ex. 1009, 1:6-9, 1:42-44, 2:45-48.
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`Caldwell’s touch pad includes “an active, low impedance touch sensor
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`attachedto only oneside ofa dielectric substrate.” Id. at 2:22-23. Figure 6
`of Caldwell is reproduced below.
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`FIG - 6
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`Figure 6 of Caldwell shows a matrix of touch pads comprising a touch
`panel. /d. at 5:60-61. To monitor the touch pads, Caldwell’s system
`sequentially provides anoscillating square wavesignal to a row or column
`oftouch padsand then sequentially selects columns or rows ofsense
`electrodes 24 to sense the signal output from the‘touch pad. Id. at 4:39-51,
`6:40-63.
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`Gerpheide (Ex. 1012)
`3.
`Gerpheidediscloses a capacitive touch responsive system that detects
`the location of a touch in a single point input device, such as those used to
`provide data inputin lieu of a mouseorstylus. Ex. 1012, 1:10-14, 1:19-20,
`2:61-3:12. Figure 2b of Gerpheideis reproduced below.
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`insuiater 31
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`POLLLLLPLLLLIELL sulator
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`insulator 33
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`a
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`Fig. 2b
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`Figure 2b illustrates a cross-sectional view of a touch pad. Jd. at
`4:56-57. Gerpheide seeks to solve the problem of reducingelectrical
`interference in single point touch pads that use measurementsoftrue
`capacitanceto determine location. Jd. at 2:21-34. To reduce electrical
`interference regardless ofits frequency, Gerpheide varies the oscillator
`signal frequency provided to the touch pad. Jd.at Figs. 4, 7, 3:13-18, 6:5-8,
`6:19-26, 8:22-9:33. More specifically, Gerpheide describes varying
`frequencies in a lookuptable, selecting a frequency, sending that frequency
`to the entire touchpad thirty-two times in succession, and then selecting a
`new frequency based on an electrical interference measure. Jd. at 9:18-33.
`4.
`Rationalefor Combining Ingraham I, Gerpheide, and
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`Caldwell
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`With respect to independent claim 40, Petitioner asserts the
`combination of Ingraham I’s microcomputer using Caldwell’s
`sequential scanning to selectively provide eachof Gerpheide’s signal
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`output frequencies as meeting the claimed “microcontroller
`selectively providing signal output frequencies to a plurality of small
`sized input touch terminals of a keypad.” Pet. 39. More specifically,
`Petitioner contends that Ingraham I’s microcomputer 80 meets the
`claimed microcontroller and input portions 13 meet the claimed
`“small sized input touch terminals of a keypad.” Jd; see alsoid. at
`19-20. Relying on Dr. Subramanian’s testimony, Petitioner contends
`that it would have been readilyapparentto oneof ordinary skill to
`modify the microcomputer and input portions ofIngraham I given the
`teachings of Caldwell such that “rows of input portions 13 would be
`selected sequentially and the oscillator signal provided to the selected
`row.” Id. at 24 (citing Ex. 1002 | 64; Ex. 1009, 6:40-63). According
`to Petitioner, a system so modified would selectively provide the
`oscillator signal frequency to the input touch terminals of a keypad,
`thereby meeting the claimed “selectively providing a signal output
`frequency to each row ofthe plurality of small sized input touch
`terminals of the keypad.” Jd. at 26, 39. The sameoscillator signal
`would be sequentially provided to each row of Ingraham I’s input
`portions 13 until all rows are scanned. Jd. at 55 (citing Ex. 1009,
`6:40-63, 8:20—23; Ex. 1002 § 132).
`Petitioner relies on Gerpheide as teaching varying the oscillator
`signal frequency provided to an electrode array in order to account for
`electrical interference. Jd. at 28 (citing Ex. 1012, 6:5—-8, 6:19-26,
`8:22-9:33, Figs. 4, 7; Ex. 1006, 329-30, 333-34). Againrelying on
`Dr. Subramanian, Petitioner alleges, “one of ordinary skill in the art
`would have been motivated to incorporate interference negating
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`functionality similar to that described by Gerpheide in the above
`discussed Ingraham I-Caldwell system.” Jd. at 28 (citing Ex. 1002,
`{ 72). Thus, Petitioner contends the system of Ingraham I-Caldwell—
`Gerpheideselectively provides signal output frequencies, as opposed
`to only a single frequency. Jd. at 29, 40.
`In its Preliminary Response, Patent Ownerasserted that one of
`ordinary skill in the art would not be motivated to combinethe
`teachings of Gerpheide with those of Ingraham I and Caldwell.
`According to Patent Owner, “Gerpheideis single touch and therefore
`is concerned aboutsensing theentire single touch pad,it does not
`sense any individual rows or seek to determine interference between
`multiple touch pads.” Prelim. Resp. 44. Patent Owner’s witness,
`Dr. Cairns,testified that Dr. Subramanian’s testimony onthis pointis
`erroneous because Gerpheide “is a single touch device that could not
`be combined with either [cited reference] to make a working device.”
`Ex 2002 § 102.
`.
`In our Decision on Institution, we determined Dr. Cairns’
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`testimony conflicted directly with Dr. Subramanian’s testimony on
`this issue. Dec. on Inst. 23. We, therefore, resolved in Petitioner’s
`favorat that stage ofthe proceeding the genuine issue ofmaterial fact
`as to whetherone ofordinary skill in the art would have looked to
`Gerpheide to combineits teaching ofselectively providing
`frequencies with Ingraham I and Caldwell. Jd. (citing 37 C-F.R
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`§ 42.108(c)).
`Having completedtrial in the matter, Petitioner must show by a
`preponderance ofthe evidence that a person ofordinary skill in the art
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`would have been motivated to combine Gerpheide with Ingraham I
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`and Caldwell with a reasonable expectation of success. We determine
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`Petitioner has failed to carry this burden for the reasonsthat follow.
`a)
`Reasons to Combine Ingraham I, Gerpheide, and
`Caldwell
`During trial, Patent Ownerargues that an artisan of ordinary
`skill would not look to Gerpheide when addressing the problem faced
`by the ’183 patent because Gerpheide “does not disclose a keypad,is
`not compatible with keypads, and was directed to reducing electrical
`interference on a single-point touchpad.” PO Resp. 23 (citing Ex.
`2010 {J 96-106). Patent Owner andDr. Caimsdirect ourattention to
`additional reference U.S. Patent No. 4,639,720 (“Rympalski”),’ which
`disparages single point touch pads becausethey “suffer from a lack of
`versatility (they are capable of locating only one coordinate point at a
`time) and ‘consumeconsiderable power and involve complex
`hardware, thereby reducingtheir cost effectiveness and practical
`utility.” Jd. at 24 (citing Ex. 2012, 2:7-17; Ex. 2010 J 96-101).
`Petitioner replies that a person ofskill in the art would be
`motivated to combine Gerpheide with Ingraham I and Caldwell
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`because Gerpheide addresses capacitive touch responsive systems.
`Reply 5-6 (citing Ex.1002 {J 70-71). Petitioner contendsthat Patent
`Owner’s reliance on Rympalski is misplaced because Rympalski “was
`filed in 1981, more than a decade before Gerpheide’sfiling date.” Id.
`at 6—7 (citing Ex.1017 J 5-6). Petitioner reiterates that, according to
`
`1 Dr. Cairns identifies that Gerpheide cites U.S. Patent No. 5,305,017
`(“Gerpheide 017”), which in tun cites Rympalski. Ex. 2010 4 98.
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`Dr. Subramanian,an ordinarily skilled artisan would have looked to
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`Gerpheide “for its teachings regarding electrical interference
`nullification in touch systems by measuring interference and adjusting
`the oscillator output frequency based on the measuredinterference.”
`Id. (citing Pet. 27-29; Ex. 1002 §] 69-72). Petitionerstates, “a
`POSITA would have looked to the inter-relatedteachings of all three
`
`references regardless of whether they are single-point touch padsor.
`not to create a capacitive touch responsive system given the
`advantages of the combined Ingraham I-Caldwell-Gerpheide system.”
`Id. at 8 (citing Ex. 1002 {J 61, 65, 66, 70, 72; Ex. 1017
`8).
`Onthis evidentiary record, we are not persuaded one of
`ordinary skill in the art would have combined Gerpheide with
`Ingraham I and Caldwell to arrive at claim 40. Gerpheideis related to
`a single point input device, such as those used to provide data input in
`lieu of a mouseorstylus. Ex. 1012, 1:10-14, 1:19-20, 2:61-3:12.
`Like the ’183 patent, Ingraham I and Caldwelldisclose capacitive
`response keypads. Ex. 1007. 1:5—9, 2:19—-20; Ex. 1009, 1:6—9, 1:42—
`44, 2:45-48. The °183 patent describes monitoring electrical
`interference across a single electrode and varying the frequency of an
`oscillator frequency based on an interference measurement. Ex. 1001,
`6:13-18, 8:22-9:33. Conversely, the ’183 patent describes “a
`multiple touch pad circuit” including “an array oftouch circuits.” Id.
`at 18:34-46. The ’183 patent seeks to overcomethe problem of
`unintended actuation of these touch circuits when suchcircuits are
`placed in dense arrays. Id. at 3:65—-4:3. Recognizing guard rings and
`sensitivity adjustments “have gone a considerable wayin allowing
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`touch switches to be spaced in comparatively close proximity,” the
`°183 patent addresses the remaining problem of surface contamination
`across the keypad. Jd. at 4:14-18. The considerations described in
`the °183 patent, Ingraham I, and Caldwell related to the close
`proximity of touch circuits in a keypad are wholly absent from
`
`Gerpheide.
`Petitioner relies on Dr. Subramanian’s testimony that an
`ordinarily skilled artisan would have looked to Gerpheide “forits
`teachings regardingelectrical interference nullification in touch
`systems by measuring interference and adjusting the oscillator output
`frequency based on the measuredinterference.” Reply 7.
`Dr. Subramanian’s testimony, however,is conclusory on this point.
`See Ex. 1002 9] 69-72. Therelevant portion of Dr. Subramanian’s
`testimony offers only that one would have found incorporating
`Gerpheide“to be a predictable and commonsense implementation to
`allow the combined Ingraham I-Caldwell system to reject electrical
`interference regardless ofits frequency without expensive nulling
`circuitry.” Ex. 1002 | 72. It is not sufficient to demonstrate that each
`of the components in a challenged claim is knowni