Trials@uspto.gov Paper 12
`Entered: August 2, 2019
`571-272-7822
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`____________
`
`Case IPR2019-00360
`Patent 5,796,183
`_____________
`
`
`
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`Entered: August 2, 2019
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`____________
`
`Case IPR2019-00360
`Patent 5,796,183
`_____________
`
`
`
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2019-00360
`Patent 5,796,183
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`I. INTRODUCTION
`On November 29, 2018, Apple Inc. (“Petitioner” or “Apple”) filed a
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 40–43,
`45, 47, 48, and 61–69 (the “challenged claims”) of U.S. Patent
`No. 5,796,183 (Ex. 1001, “the ’183 patent”). UUSI, LLC d/b/a Nartron
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) on
`May 6, 2019. Pursuant to a May 22, 2019 Order (Paper 9), the parties
`exchanged briefs further addressing the issue of discretionary denial of
`institution under 35 U.S.C. § 314(a) (Papers 10, 11).
`By statute, institution of an inter partes review may not be authorized
`unless “the information presented in the petition . . . and any response . . .
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). Upon consideration of the Petition and the Preliminary Response,
`we conclude that the information presented does not show there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any challenged claim of the ’183 patent. Accordingly, we
`do not institute an inter partes review.
`
`II. BACKGROUND
`A. Related Matters
`According to Petitioner, the ’183 patent is the subject of the following
`district court litigation: UUSI, LLC v. Apple Inc., No. 3-18-cv-04637 (N.D.
`Cal.); and UUSI, LLC v. Apple Inc., No. 2:17-cv-13798 (E.D. Mich.), which
`has been transferred to the Northern District of California. Pet. 66. Patent
`Owner indicates that the ’183 patent is also the subject of UUSI, LLC v.
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`Samsung Electronics Co., Ltd., No. 1:15-cv-00146 (W.D. Mich.). Paper 3,
`2.
`
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control No. 90/012,439, certificate (“Reexam. Cert. C1”)
`issued April 29, 2013 (Ex. 1006, 1); and Ex Parte Reexamination Control
`No. 90/013,106, certificate (“Reexam. Cert. C2”) issued June 27, 2014
`(Ex. 1007, 24). The challenged claims were amended or added during the
`reexaminations. Ex. 1006, 2–3; Ex. 1007, 27–28.
`The ’183 patent is the subject of an earlier-filed inter partes review
`proceeding, Samsung Electronics Co., Ltd. v. UUSI, LLC, Case IPR2016-
`00908 (“the Samsung IPR”). Pet. 66; Paper 3, 1. The Federal Circuit
`recently vacated the Final Written Decision in the Samsung IPR, in which
`the Board determined that Samsung had not demonstrated unpatentability of
`any claims, and remanded to the Board for further proceedings. Samsung
`Elecs. Co. v. UUSI, LLC, No. 2018-1310, 2019 WL 2511739, at *5 (Fed.
`Cir. June 18, 2019) (“Samsung Appeal Opinion”).
`Petitioner has also filed five other petitions challenging claims of the
`’183 patent under various grounds in IPR2019-00355, IPR2019-00356,
`IPR2019-00357, IPR2019-00358, and IPR2019-00359. Paper 3, 1. We
`denied institution of review in IPR2019-00355, IPR2019-00356, and
`IPR2019-00357. IPR2019-00355, Paper 14; IPR2019-00356, Paper 14;
`IPR2019-00357, Paper 12.
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`B. The ’183 Patent
`The ’183 patent, titled “Capacitive Responsive Electronic Switching
`Circuit,” was filed January 31, 1996, and issued August 18, 1998. Ex. 1001,
`[22], [45], [54]. The ’183 patent has expired. Prelim. Resp. 18.
` The ’183 patent relates to a “capacitive responsive electronic
`switching circuit used to make possible a ‘zero force’ manual electronic
`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 2:40–41. Instead, such switches detect an operator’s touch and
`use solid state electronics to switch loads or activate mechanical relays. Id.
`at 2:42–44. “A common solution used to achieve a zero force touch switch
`has been to make use of the capacitance of the human operator.” Id. at 3:12–
`14. As background, the ’183 patent describes 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.
`Id. at 3:13–15, 3:44–46. In this method, “[t]he touch of an operator then
`provides a capacitive short to ground via the operator’s own body
`capacitance.” Id. at 3:52–55. Figure 8, reproduced below, is an example
`that makes use of this method.
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`Figure 8 depicts a “touch circuit” in which, when a pad (not shown) is
`touched to create a short to ground via terminal 451, transistor 410 turns on
`and connects a high frequency input at 201 to resistor/capacitor circuit
`416/418, thus triggering Schmitt Trigger 420 to provide control output 401.
`Id. at 14:47–52, 15:17–47. Significantly, the operator of a capacitive touch
`switch using this method need not come in conductive contact with the touch
`terminal. Id. at 3:57–59. Rather, the operator needs only to come into close
`proximity of the switch. Id.
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`Figure 4 of the ’183 patent is reproduced below.
`
`
`Figure 4 is a block diagram of a capacitive responsive electronic switching
`circuit according to a first embodiment of the ’183 patent. Id. at 7:23–25.
`As depicted in Figure 4, the electronic switching circuit of the first
`embodiment comprises voltage regulator 100, oscillator 200, floating ground
`generator 300, touch circuit 400, touch pad 450, and microcontroller 500.
`Id. at 11:64–12:33.
`Voltage regulator 100 converts a received AC voltage to a DC voltage
`and supplies a regulated 5 volts (V) DC power to oscillator 200 via lines 104
`and 105. Id. at 11:67–12:2. Voltage regulator 100 also supplies oscillator
`200 with 26 V DC power via line 106. Id. at 12:2–3.
`Upon being powered by voltage regulator 100, oscillator 200
`generates a square wave with a frequency of 50 kHz, or preferably greater
`than 800 kHz, and having an amplitude of 26 V peak. Id. at 12:6–9.
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`Floating common generator 300 receives the 26 V peak square wave from
`oscillator 200, and outputs a regulated floating common that is 5 volts below
`the square wave output from oscillator 200 and has the same phase and
`frequency as the received square wave. Id. at 12:14–18. This floating
`common output is supplied to touch circuit 400 and microcontroller 500 via
`line 301 such that the output square wave from oscillator 200 and floating
`common output from floating common generator 300 provide power to
`touch circuit 400 and microcontroller 500. Id. at 12:18–23.
`Touch circuit 400 senses capacitance from touch pad 450 via line 451
`and outputs a signal to microcontroller 500 via line 401 upon detecting a
`capacitance to ground at touch pad 450 that exceeds a threshold value. Id. at
`12:24–27. Figure 8 reproduced above describes touch circuit 400 in detail.
`Id. at 12:27–28.
`Upon receiving an indication from touch circuit 400 that a sufficient
`capacitance to ground is present at touch pad 450, microcontroller 500
`outputs a signal to load-controlling microcontroller 600 via line 501, which
`is preferably a two way optical coupling bus. Id. at 12:29–34.
`Microcontroller 600 then responds in a predetermined manner to control
`load 700. Id. at 12:33–35.
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`Figure 11 of the ’183 patent is reproduced below.
`
`
`Figure 11 is a block diagram of a capacitive responsive electronic switching
`circuit according to a second embodiment of the ’183 patent. Id. at 7:43–45.
`As depicted in Figure 11, the second embodiment discloses a “multiple
`touch pad circuit,” which is a variation of the electronic switching circuit of
`the first embodiment discussed above in that the multiple touch pad circuit
`includes “an array of touch circuits” 9001 through 900nm, where each
`element of the array includes touch circuit 400 described in Figures 4 and 8
`above, as well as touch pad 450 depicted in Figure 4. Id. at 18:34–43.
`In this “multiple touch pad circuit” embodiment, microcontroller 500
`selects each row of touch circuits 9001 to 900nm by providing the signal from
`oscillator 200 to selected rows of touch circuits. Id. at 18:43–46. The ’183
`patent describes that “[i]n this manner, microcontroller 500 can sequentially
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`activate the touch circuit rows and associate the received inputs from the
`columns of the array with the activated touch circuit(s).” Id. at 18:46–49. In
`other words, the microcontroller selects successive rows of the touch circuit
`array by providing the signal from oscillator 200 sequentially to each row,
`such that a particular activated touch circuit is detected by the
`microcontroller via association of an activated row with received input from
`a column line of the array. Id. at 18:43–49.
`The ’183 patent recognizes that placing capacitive touch switches in
`dense arrays, as in Figure 11, can result in unintended actuations. Id. at
`3:65–4:3. One method of addressing this problem known in the art involves
`placing guard rings around each touch pad. Id. at 4:4–7. 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.
`Id. at 4:8–14. “Although these methods (guard rings and sensitivity
`adjustment) have gone a considerable way in allowing touch switches to be
`spaced in comparatively close proximity, a susceptibility to surface
`contamination remains as a problem.” Id. at 4:14–18.
`The ’183 patent uses the technique of Figure 11 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.” Id. 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 minimize the effects of surface
`contamination on the touch pads. Id. at 11:19–29. Operating at these
`frequencies also improves sensitivity, allowing close control of the
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`proximity required for actuation of small-sized touch terminals in a close
`array, such as a keyboard. Id. at 5:48–57.
`
`C. Illustrative Claim
`Of the challenged claims, claims 40 and 61 are independent.
`Claim 40 is illustrative of the challenged claims and is reproduced below.
`40. A capacitive responsive electronic switching circuit
`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 frequencies to 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 of the plurality 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 operator to
`provide inputs by proximity and touch; and
`a detector circuit coupled to 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 coupled to said touch terminals when
`proximal or touched by the operator to provide a control
`output signal,
`wherein said predefined frequency of said oscillator and said
`signal output frequencies are selected to decrease a first
`impedance of said 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,
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`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.
`Ex. 1001, Reexam. Cert. C2, 1:23–56.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`Petitioner cites the following references in its challenges to
`patentability.
`
`Designation Exhibit No.
`Issue Date
`Reference
`U.S. Patent No. 4,561,002 Dec. 24, 1985 Chiu
`Ex. 1005
`U.S. Patent No. 4,922,061 May 1, 1990 Meadows1
`Ex. 1013
`U.S. Patent No. 4,418,333 Nov. 29, 1983 Schwarzbach Ex. 1014
`U.S. Patent No. 4,731,548 Mar. 15, 1988
`Ingraham ’548 Ex. 1016
`
`Petitioner also relies on the Declaration of Dr. Phillip D. Wright
`(Ex. 1003, “Wright Declaration” or “Wright Decl.”).
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Statutory Basis
`Claims Challenged
`40, 45, 47, 48, 61–64, 66 § 103(a)2
`
`41–43, 67–69
`
`§ 103(a)
`
`References
`Chiu and Schwarzbach
`Chiu, Schwarzbach, and
`Meadows
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’183 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of § 103.
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`Claims Challenged
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`Statutory Basis
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`65
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`§ 103(a)
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`References
`Chiu, Schwarzbach, and
`Ingraham ’548
`
`III. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Wright, opines that a person of ordinary
`skill in the art as of the critical date of the ’183 patent would have had at
`least a Bachelor of Science degree in electrical engineering or a related
`technical field, and two or more years of experience in electrical circuits and
`sensor systems. Ex. 1003 ¶ 22. Patent Owner does not propose a level of
`ordinary skill in the art in the Preliminary Response.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art 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). Therefore, for
`purposes of this Decision, we adopt Petitioner’s unopposed position as to the
`level of ordinary skill in the art.
`
`B. Claim Construction
`Due to a recent rule change, the claim construction standard that
`applies in an inter partes review depends on whether the petition was filed
`before or after November 13, 2018. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,340–41 (Oct. 11, 2018) (codified
`at 37 C.F.R. § 42.100(b) (2019)). Because the Petition was filed November
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`29, 2018 (Paper 5, 1), we apply the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`§ 282(b), following the standard articulated in Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc).3 See 83 Fed. Reg. at 51,343.
`Under that standard, claim terms are generally given their ordinary
`and customary meaning, which is “the meaning that the term would have to
`a person of ordinary skill in the art in question at the time of the invention.”
`Phillips, 415 F.3d at 1312–13. “Importantly, the person of ordinary skill in
`the art is deemed to read the claim term not only in the context of the
`particular claim in which the disputed term appears, but in the context of the
`entire patent, including the specification.” Id. at 1313. “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`Petitioner proposes constructions for three claim terms: “providing
`signal output frequencies” recited in independent claims 40 and 61; “supply
`voltage” recited in claim 61; and “coupled” recited in claims 40 and 61.
`Pet. 9–12. At this stage of the proceeding, Patent Owner disputes the
`construction for only one of those terms, namely, “providing signal output
`frequencies.” Prelim. Resp. 24–28.
`
`
`3 We note that, because the ’183 patent has expired, our claim interpretation
`would have followed Phillips regardless of filing date. See In re Rambus
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
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`As discussed below, our Decision in this case does not rest on the
`distinctions between these proposed constructions. For purposes of this
`Decision, we determine that no claim term requires express construction.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that only terms that are in controversy need to be construed,
`and “only to the extent necessary to resolve the controversy”); see also
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`review).
`
`C. Obviousness over Chiu and Schwarzbach
`In this asserted ground of obviousness, Petitioner contends that claims
`40, 45, 47, 48, 61–64, and 66 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the combination of Chiu and Schwarzbach. Pet. 14–56. In
`support of its contentions, Petitioner submits the Declaration of Dr. Wright
`(Ex. 1003). Id. Given the evidence of record, we are not persuaded that
`Petitioner has established a reasonable likelihood of prevailing on this
`asserted ground as to any of these challenged claims for the reasons
`explained below.
`
`1. Relevant Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`analyze these asserted grounds based on obviousness with the principles
`identified above in mind.
`
`2. Overview of Chiu (Ex. 1005)
`Chiu describes a capacitive type touch switch cell arrangement using
`capacitive coupling between a touch pad and an electrode, which is alterable
`by a human touching or being proximate to the touch pad. Ex. 1005, [57].
`Figure 6A of Chiu is reproduced below.
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`Figure 6A is a simplified schematic circuit diagram of an exemplary touch
`switch arrangement of Chiu. Id. at 3:38–41.
`Chiu describes that, in the control circuit depicted in Figure 6A,
`microprocessor 90 sequentially generates a scan pulse at each of outputs R0–
`R5, which are coupled to rows a–f of the capacitive touch cell array 10 via
`driver circuitry 92. Id. at 8:45–49. According to Chiu, in this embodiment,
`microprocessor 90 is a commercially available TMS 1670 microprocessor,
`which can be customized by configuring its read only memory (ROM) to
`implement the desired control scheme. Id. at 9:7–12. Chiu describes that a
`portion of the ROM of microprocessor 90 is configured to generate the
`capacitive touch keyboard drive signals, which are scan pulses provided
`sequentially at outputs R0–R5 of microprocessor 90. Id. at 9:12–18.
`Figure 7 of Chiu is reproduced below.
`
`
`Figure 7 is a timing diagram illustrating the scan signals used in the
`control circuit depicted in Figure 6A. Id. at 3:45–46. According to Chiu,
`the timing diagram shown in Figure 7 represents one complete scan cycle.
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`Id. at 10:30–31. Chiu describes that, during each scan cycle, a scan pulse
`appears sequentially at each of outputs R0–R5.
`According to Chiu, as shown in Figure 6A, columns g–j of the touch
`cell array are coupled to inputs C5–C2, respectively, of detection circuitry 58
`via limiting resistors 114. Id. at 8:56–58. Detection circuitry 58 senses the
`scan signal at each of the touch cells in the row being scanned by checking
`their respective column output lines 49 to detect an attenuation of the
`column output line signal, signifying that a touch pad in a particular column
`has been touched. Id. at 8:63–67. If a touch pad in the row being scanned is
`touched, the signal detector circuit will detect the attenuation of the scanned
`signal for that column containing the touched pad. Id. at 8:67–9:3. Chiu
`describes that, in this fashion, a pad in the touch cell array that has been
`touched is identified by row and column. Id. at 9:5–6.
`
`3. Overview of Schwarzbach (Ex. 1014)
`Schwarzbach describes an appliance control system including a
`central control unit. Ex. 1014, [57]. Figure 1 of Schwarzbach is reproduced
`below.
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`Figure 1 describes an exemplary appliance control system according to
`Schwarzbach. Id. at 3:8–10. As shown in Figure 1, system 20 includes
`central control unit 30, one or more lamp slave units 200, one or more
`appliance slave units 300, and one or more wall switch slave units 400.
`Figure 4B of Schwarzbach is reproduced below.
`
`
`
`Figure 4B is a schematic circuit diagram of the electrical circuit in the
`central control unit depicted in Figure 1. Id. at 3:18–20.
`As shown in Figure 4B, electrical circuit 50 of central control unit 30
`includes microprocessor 100. Id. at 4:9–11. Schwarzbach describes that
`microprocessor 100 is preferably a TMS 1670 microprocessor. Id. at 15:62.
`Central control unit 30 also includes keyboard 40 which is coupled to
`display panel 35 and to microprocessor 100. Id. at 4:50–52. Keyboard 40 is
`connected as a 3x8 matrix, with its row pins connected to corresponding
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`microprocessor output terminals. Id. at 4:55–58. Key presses are detected
`by driving output terminals and scanning for closed keys. Id. at 4:58–67.
`When a key closure is detected, microprocessor 100 takes the appropriate
`action after the end of the keyboard scan. Id. at 4:67–5:1.
`
`4. Independent Claims 40 and 61
`Independent claims 40 and 61 recite identical or nearly identical
`limitations. Thus, in what follows, we discuss these two independent claims
`together.
`Claims 40 and 61 each recite “an oscillator providing a periodic
`output signal having a predefined frequency” and “a microcontroller using
`the periodic output signal from the oscillator.” Ex. 1001, Reexam. Cert. C2,
`1:25–28 (claim 40), 3:38–41 (claim 61). The claims also recite limitations
`with identical claim language as follows (the “decrease impedance
`limitation”):
`wherein said predefined frequency of said oscillator and said
`signal output frequencies are selected to decrease a first
`impedance of said 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
`Id., Reexam. Cert. C2, 1:46–52 (claim 40), 3:60–66 (claim 61). To teach all
`three limitations quoted above, Petitioner relies on the combination of Chiu
`and Schwarzbach. Pet. 25–26, 43–45.
`First, Petitioner contends that Schwarzbach teaches an “oscillator”
`with a “predefined frequency” of 150 kHz (id. at 25–26 (citing Ex. 1014,
`9:8–32)) because Schwarzbach describes a TMS 1670 microprocessor
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`including a “transmitter/modulator” that functions as a “150 KHz oscillator”
`(id. at 53 (citing Ex. 1014, 8:24–9:32)). Petitioner asserts that
`Schwarzbach’s “transmitter/modulator” generates a carrier wave, which is
`pulse-width modulated to produce coded signals. Id. at 25–26 (citing
`Ex. 1014, 9:8–32). Citing the testimony of Dr. Wright, Petitioner argues that
`because Schwarzbach describes the coded signals as a “wave form,” a
`person of ordinary skill in the art would have understood the coded signals
`to be a “periodic output signal.” Id. at 26 (citing Ex. 1003 ¶ 91).
`Next, to teach “a microcontroller using the periodic output signal from
`the oscillator,” Petitioner combines microprocessor 90 of Chiu with the
`“transmitter/modulator” of Schwarzbach that functions as a 150 kHz
`oscillator. Id. Petitioner asserts that, because both Chiu and Schwarzbach
`use the same TMS 1670 microprocessor, a person of ordinary skill in the art
`would have understood that Chiu’s microprocessor to “also include these
`features,” i.e., a “transmitter/modulator” that functions as a 150 kHz
`oscillator. Id. (citing Ex. 1005, 9:7–9; Ex. 1014, 15:62–63; Ex. 1003 ¶ 91).
`Citing the testimony of Dr. Wright, Petitioner contends that a person of
`ordinary skill in the art would have understood that the
`“transmitter/modulator” described in Schwarzbach to be the “signal
`generator circuitry” of the identical TMS 1670 microprocessor described in
`Chiu. Id. at 53 (citing Ex. 1014, 8:24-9:32; Ex. 1003 ¶ 125).
`Lastly, Petitioner contends that Schwarzbach also teaches a
`“predefined frequency” that is “selected to decrease a first impedance of
`[the] dielectric substrate,” as recited in claims 40 and 61, because the
`150 kHz frequency of Schwarzbach’s oscillator falls within the frequency
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`range of “150 kHz and above” described in the ’183 patent to provide
`increased immunity to cross-coupling. Id. at 43 (citing Ex. 1014, 9:8–32;
`Ex. 1001, 11:19–37, 8:9–11:59). Referencing Figure 3A of the ’183 patent,
`Petitioner asserts that the ’183 patent describes that the impedance of the
`dielectric decreases when the frequency of the oscillator is increased. Id. at
`43–44 (citing Ex. 1001, 10:31–34, Fig. 3A; Ex. 1003 ¶ 114). Petitioner
`argues that
`because Schwarzbach’s oscillator frequency is selected in the
`frequency range taught by the ’183 patent to increase the cross-
`coupling immunity by decreasing the impedance of the
`dielectric, a touch circuit of the Chiu/Schwarzbach combination
`would also have the effect of decreasing the impedance of the
`dielectric.
`Id. at 44–45 (citing Ex. 1001, 11:19–37, 8:9–11:59, Fig. 3A; Ex. 1014, 9:8–
`32; Ex. 1003 ¶ 114).
`We are not persuaded by Petitioner’s arguments and evidence for
`several reasons. First, addressing Petitioner’s contention that Schwarzbach
`teaches a TMS 1670 microprocessor including a “transmitter/modulator”
`that functions as a “150 KHz oscillator” (id. at 25–26 (citing Ex. 1014, 9:8–
`32), 53 (citing Ex. 1014, 8:24–9:32)), we discern no disclosure in
`Schwarzbach that transmitter/modulator 110 is included in the TMS 1670
`microprocessor. Rather, in the portion of Schwarzbach cited by Petitioner,
`Schwarzbach describes that “[t]he central control unit 30 also includes a
`transmitter/modulator, generally designated by the numeral 110, for
`transmitting signals to the remote slave units 200, 300 and 400.” Ex. 1014,
`Fig. 4A, 8:21–26 (emphases added). As discussed above in Section III.C.3
`(Overview of Schwarzbach), Figures 1 and 4B of Schwarzbach describe that
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`central control unit 30 is a controller box that includes electrical circuit 50,
`which in turn includes a TMS 1670 microprocessor. Id., 3:66–4:1, 4:9–11,
`Figs. 1 & 4B. Although Figure 4B shows that the TMS 1670
`microprocessor is included in electrical circuit 50 of Schwarzbach, there is
`no indication in Schwarzbach that transmitter/modulator 110 is included in
`the TMS 1670 microprocessor, as Petitioner contends. Instead, it is an
`entirely separate circuit depicted in Figure 4A.
`In his Declaration, Dr. Wright opines that a person of ordinary skill in
`the art would have understood the “transmitter/modulator” described in
`Schwarzbach to be the “signal generator circuitry” of the identical TMS
`1670 microprocessor described in Chiu. Ex. 1003 ¶ 125 (citing Ex. 1014,
`8:24–9:32). As discussed above, we discern no disclosure in the portion of
`Schwarzbach cited by Dr. Wright that transmitter/modulator 110 is part of
`the TMS 1670 microprocessor. We are not persuaded by Dr. Wright’s
`testimony because Dr. Wright does not explain adequately how the cited
`portion of Schwarzbach discloses that transmitter/modulator 110 is the
`“signal generator circuitry” of the TMS 1670 microprocessor.
`Next, Patent Owner argues that Schwarzbach’s 150 kHz signal is a
`carrier frequency used to send coded communication signals and, as such,
`the signal is not used in any way to generate signals used to activate touch
`terminals. Prelim. Resp. 33 (citing Ex. 1014, 9:20–24; Ex. 2002 ¶ 57).
`We agree with Patent Owner’s argument. In the portion of
`Schwarzbach cited by Petitioner (and Patent Owner), Schwarzbach describes
`that the 150 kHz signal generated by Schwarzbach’s transmitter/modulator is
`a carrier frequency used to send messages (coded communication signals) to
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`the remote slave units. See, e.g., Ex. 1014, 8:21–26, 9:20–24. Petitioner
`does not explain adequately how Chiu’s microprocessor (the claimed
`“microcontroller”) would use Schwarzbach’s communication signals to
`Schwarzbach’s remote slave units (the claimed “periodic output signal”) to
`drive or activate Chiu’s touch pad, as required in claims 40 and 61.
`Turning next to the “decrease impedance limitation,” Petitioner does
`not explain adequately how or why Chiu and Schwarzbach would be
`combined to produce the claimed invention. See TriVascular, Inc. v.
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). First, Petitioner does not
`identify any teaching or suggestion in Chiu or Schwarzbach that
`Schwarzbach’s 150 kHz communication signal is used “to decrease a first
`impedance of said dielectric substrate relative to a second impedance of any
`contaminate,” as recited in the claims. The only evidence of record
`Petitioner cites as teaching the claimed decreasing impedance feature is the
`’183 patent itself. See Pet. 43–45 (citing Ex. 1001, 10:31–34, 11:19–37,
`8:9–11:59, Fig. 3A). Thus, Petitioner does not explain adequately how a
`person of ordinary skill in the art would have combined Chiu and
`Schwarzbach to achieve the claimed decreasing impedance missing from
`both references.
`In addition, Petitioner does not explain sufficiently why a person of
`ordinary skill in the art would have been motivated to combine Chiu with
`Schwarzbach to achieve the claimed decreasing impedance. The only
`reasons to combine the references articulated in the Petition relate to
`combining Chiu’s touch circuit with Schwarzbach’s supply voltage applied
`to the TMS 1670 microprocessor and Schwarzbach’s battery power used in
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`the event of power failure. Pet. 17–19. Thus, Petitioner does not explain
`adequately why a person of ordinary skill in the art would have been
`motivated to combine Chiu’s t
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