UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. AND MICROSOFT CORPORATION
`Petitioners
`
`v.
`
`Neodron, Ltd.
`Patent Owner
`____________
`
`Case Nos. IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`____________
`
`DECLARATION OF DR. TONY GIVARGIS
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`IPR2020-01000
`Apple EX1003 Page 1
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. AND MICROSOFT CORPORATION
`Petitioners
`
`v.
`
`Neodron, Ltd.
`Patent Owner
`____________
`
`Case Nos. IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`____________
`
`DECLARATION OF DR. TONY GIVARGIS
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`IPR2020-01000
`Apple EX1003 Page 1
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`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
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`I, Tony Givargis, hereby declare the following:
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`I.
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`INTRODUCTION
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`1.
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`I, Tony Givargis, have been retained by counsel for Petitioners as a
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`technical expert in the above-captioned case. Specifically, I have been asked to
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`render certain opinions in regard to the concurrently filed IPR petitions1 with respect
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`to U.S. Patent No. 8,749,251 (the “’251 Patent”). I understand that the Challenged
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`Claims are claims 1-20. My opinions are limited to those Challenged Claims.
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`2. My compensation in this matter is not based on the substance of my
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`opinions or the outcome of this matter. I have no financial interest in Petitioners. I
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`am being compensated at an hourly rate of $500 for my analysis and testimony in
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`this case.
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`3.
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`In reaching my opinions in this matter, I have reviewed the following
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`materials:
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`• Exhibit 1001 - U.S. Patent No. 8,749,251 (“the ’251 Patent”)
`• The ’251 Patent File History
`• Stay Orders, W.D. Tex.
`
`1 I understand that Petitioners have filed two separate IPR petitions challenging the
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`validity of all claims of the ’251 Patent. For reference herein, the petition filed in
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`IPR2020-00998 will be referred to as the “102(b) Petition” and the petition filed in
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`IPR2020-01000 will be referred to as the “Priority Petition.”
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`• Microsoft’s Computer Dictionary (“Microsoft Computer Dictionary 4th
`Ed.”)
`• Barron’s Dictionary of Computer and Internet Terms (“Barron’s
`Computer Dictionary”)
`• Touchscreens 101: Understanding touchscreen technology and design
`(“Touchscreens 101”)
`• U.S. Patent No. 8,599,150 (the “’150 Patent”)
`• U.S. Patent No. 9,632,628 (the “’628 Patent”)
`• U.S. Patent No. 9,823,784 (the “’784 Patent”)
`• U.S. Patent No. 9,024,790 (the “’790 Patent”)
`• ITC Markman Order
`• U.S. Patent No. 6,058,485 to Koziuk, et al. (“Koziuk”)
`• U.S. Patent No. 5,283,559 to Kalendra, et al. (“Kalendra”)
`• Quantum Research Group QT110 Data Sheet (“QT110”)
`• U.S. Patent Pub. No. 2005/0121980 to Bruwer (“Bruwer”)
`• Quantum Research Group QT60161 Data Sheet (“QT60161”)
`• Affidavit from Chris Butler at the Internet Archive – QT110
`• Affidavit from Chris Butler at the Internet Archive – QT61061
`• U.S. App. No. 12/179,769 (the “’769 Parent Application”)
`• Provisional Application No. 60/952,053 (“Provisional Application”)
`• ’366 Parent Patent File History
`• U.S. Pat. Pub. 2007/0076897 (the “’897 Publication”)
`• U.S. Patent Publication No. 2009/0027068 to Philipp, et al. (“the ’068
`Publication”)
`• U.S. Patent Publication No. 2007/0109276 to Kim et al. (“Kim”)
`• U.S. Pat. No. 5,730,165 (the “’165 Patent”)
`• U.S. Pat. No. 6,466,036 (the “’036 Patent”)
`• U.S. Pat. No. 6,452,514 (the “’514 Patent”)
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`3
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`• Renesas’s pulse-width modulation regulator ISL6534 (“ISL6534”)
`• U.S. Patent No. 3,979,240 to Ghezzo (“Ghezzo”)
`A. Background and Qualifications
`4.
`I am a Professor in the department of Computer Science at the
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`University of California, Irvine (UCI) since July of 2001. I served as the Associate
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`Dean in the School of Information and Computer Sciences at UCI from 2011 to
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`2016. I am currently, serving as the Vice Chair of the department of Computer
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`Science at UCI. I graduated Cum Laude with a Bachelor of Science in Computer
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`Science in 1997 and PhD in Computer Science in 2001 from the University of
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`California, Riverside. My PhD thesis was entitled “System-Level Exploration for
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`Pareto-Optimal Configurations in Parameterized System-on-a-Chip.” It received
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`the School’s Best Thesis Award that year.
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`5. My research interests are generally directed at various aspects of the
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`design of Embedded Systems. Embedded Systems are computing devices that
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`operate within a larger system and include things such as consumer electronics,
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`handheld devices, office equipment, industrial equipment, medical devices,
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`autonomous and self-driving vehicles, and many other types of systems. Embedded
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`systems are characterized as having rich sensing capabilities (e.g., keypads and touch
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`sensitive input devices, heat/pressure sensors, etc.), actuation capabilities (e.g.,
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`displays, robotic arms, etc.) and heavy control logic (e.g., programmable embedded
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`
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`processors, dedicated processing elements and extensive software logic). More
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`specifically, my research focuses on software for Embedded Systems, real-time
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`systems, Internet of Things devices, mobile and handheld devices, ML/AI control
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`algorithms for Cyber Physical Systems, compilers for embedded software and code
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`transformations techniques for efficient software to hardware migration.
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`6.
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`In addition to research, I exclusively teach the embedded systems
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`courses at UCI both at the undergraduate as well as the graduate courses. My upper
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`division Embedded Systems courses (CS 145 and CS 145L) are immensely popular
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`with yearly enrollments exceeding 350 students. In these courses, students build a
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`number of Embedded Systems from ground up out of components, including
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`keypads and touch sensitive input devices. Additionally, they program the compute
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`elements of their systems with various algorithms and application logic in order to
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`solve a problem. I also teach the graduate embedded software course (CS245) that
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`covers more advanced topics related to Embedded Systems design, including
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`modeling, design and validation of complex devices.
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`7.
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`I have co-authored two textbooks on Embedded Systems design that are
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`widely used in academia. In 2011, I received the prestigious ASEE’s Frederick
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`Emmons Terman Award for having authored these textbooks and advanced higher
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`education in the areas of Embedded Systems. I have published over 100 peer-
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`reviewed and archived conference and journal papers. I have 13 issued US Patents
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`to my name. I have advised and graduated eight accomplished PhD students that are
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`currently professors, research scientists, software engineers and technical leaders in
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`their respective fields. Over the years, as a consultant, I have designed a number of
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`embedded system products and served as technical expert and consultant for
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`numerous corporations in the technology sector. I am currently serving on a number
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`of Technical Program Committees of conferences related to Embedded Systems. I
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`am an Associate Editor of the Computer Science & Engineering section of
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`Electronics Journal. For additional relevant background, I direct your attention to
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`my Curriculum Vitae attached as Appendix A.
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`II. LEGAL FRAMEWORK
`8.
`I am a technical expert and do not offer any legal opinions. However,
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`counsel has informed me as to certain legal principles regarding patentability and
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`related matters under United States patent law, which I have applied in performing
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`my analysis and arriving at my technical opinions in this matter.
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`9.
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`I have been informed that the Patent Trial and Appeal Board (“PTAB”)
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`now applies the claim construction standard applied by Article III courts (i.e., the
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`Phillips standard) regardless of whether a patent has expired. I have been informed
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`that under the Phillips standard, claim terms are to be given the meaning they would
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`have to a person having ordinary skill in the art at the time of the invention, taking
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`into consideration the patent, its file history, and, secondarily, any applicable
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`extrinsic evidence (e.g., dictionary definitions).
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`10.
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`I have also been informed that a person cannot obtain a patent on an
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`invention if the differences between the invention and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art. I have been informed that a
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`conclusion of obviousness may be founded upon more than a single item of prior art.
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`I have been further informed that obviousness is determined by evaluating the
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`following factors: (1) the scope and content of the prior art, (2) the differences
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`between the prior art and the claim at issue, (3) the level of ordinary skill in the
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`pertinent art, and (4) secondary considerations of non-obviousness. In addition, the
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`obviousness inquiry should not be done in hindsight. Instead, the obviousness
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`inquiry should be done through the eyes of a person of ordinary skill in the relevant
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`art at the time the patent was filed.
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`11.
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`In considering whether certain prior art renders a particular patent claim
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`obvious, counsel has informed me that I can consider the scope and content of the
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`prior art, including the fact that one of skill in the art would regularly look to the
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`disclosures in patents, trade publications, journal articles, industry standards,
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`product literature and documentation, texts describing competitive technologies,
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`requests for comment published by standard setting organizations, and materials
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`from industry conferences, as examples. I have been informed that for a prior art
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`reference to be proper for use in an obviousness analysis, the reference must be
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`“analogous art” to the claimed invention. I have been informed that a reference is
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`analogous art to the claimed invention if: (1) the reference is from the same field of
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`endeavor as the claimed invention (even if it addresses a different problem); or (2)
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`the reference is reasonably pertinent to the problem faced by the inventor (even if it
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`is not in the same field of endeavor as the claimed invention). In order for a reference
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`to be “reasonably pertinent” to the problem, it must logically have commended itself
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`to an inventor's attention in considering his problem. In determining whether a
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`reference is reasonably pertinent, one should consider the problem faced by the
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`inventor, as reflected either explicitly or implicitly, in the specification. I believe that
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`all of the references that my opinions in this IPR are based upon are well within the
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`range of references a person of ordinary skill in the art would consult to address the
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`type of problems described in the Challenged Claims.
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`12.
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`I have been informed that, in order to establish that a claimed invention
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`was obvious based on a combination of prior art elements, a clear articulation of the
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`reason(s) why a claimed invention would have been obvious must be provided.
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`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
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`combination of multiple items of prior art renders a patent claim obvious when there
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`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
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`to combine the prior art, which can include, but is not limited to, any of the following
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`rationales: (A) combining prior art methods according to known methods to yield
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`predictable results; (B) substituting one known element for another to obtain
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`predictable results; (C) using a known technique to improve a similar device in the
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`same way; (D) applying a known technique to a known device ready for
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`improvement to yield predictable results; (E) trying a finite number of identified,
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`predictable potential solutions, with a reasonable expectation of success; (F)
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`identifying that known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations are predictable to one of ordinary skill in the art; or
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`(G) identifying an explicit teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art reference or to combine
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`the prior art references to arrive at the claimed invention.
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`13.
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`I am informed that the existence of an explicit teaching, suggestion, or
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`motivation to combine known elements of the prior art is a sufficient, but not a
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`necessary, condition to a finding of obviousness. This so-called “teaching
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`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
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`in an obviousness analysis. In determining whether the subject matter of a patent
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`claim is obvious, neither the particular motivation nor the avowed purpose of the
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`patentee controls. Instead, the important consideration is the objective reach of the
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`claim. In other words, if the claim extends to what is obvious, then the claim is
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`invalid. I am further informed that the obviousness analysis often necessitates
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`consideration of the interrelated teachings of multiple patents, the effects of demands
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`known to the technological community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skill in the art. All of
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`these issues may be considered to determine whether there was an apparent reason
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`to combine the known elements in the fashion claimed by the patent.
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`14.
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`I also am informed that in conducting an obviousness analysis, a precise
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`teaching directed to the specific subject matter of the challenged claim need not be
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`sought out because it is appropriate to take account of the inferences and creative
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`steps that a person of ordinary skill in the art would employ. The prior art considered
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`can be directed to any need or problem known in the field of endeavor at the time of
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`invention and can provide a reason for combining the elements of the prior art in the
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`manner claimed. In other words, the prior art need not be directed towards solving
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`the same specific problem as the problem addressed by the patent. Further, the
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`individual prior art references themselves need not all be directed towards solving
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`the same problem. I am informed that, under the KSR obviousness standard, common
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`sense is important and should be considered. Common sense teaches that familiar
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`items may have obvious uses beyond their primary purposes.
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`15.
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`I also am informed that the fact that a particular combination of prior art
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`
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`elements was “obvious to try” may indicate that the combination was obvious even
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`if no one attempted the combination. If the combination was obvious to try
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`(regardless of whether it was actually tried) or leads to anticipated success, then it is
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`likely the result of ordinary skill and common sense rather than innovation. I am
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`further informed that in many fields it may be that there is little discussion of obvious
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`techniques or combinations, and it often may be the case that market demand, rather
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`than scientific literature or knowledge, will drive the design of an invention. I am
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`informed that an invention that is a combination of prior art must do more than yield
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`predictable results to be non-obvious.
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`16.
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`I am informed that for a patent claim to be obvious, the claim must be
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`obvious to a person of ordinary skill in the art at the time of the invention. I am
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`informed that the factors to consider in determining the level of ordinary skill in the
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`art include (1) the educational level and experience of people working in the field at
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`the time the invention was made, (2) the types of problems faced in the art and the
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`solutions found to those problems, and (3) the sophistication of the technology in the
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`field.
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`17.
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`I am informed that it is improper to combine references where the
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`references teach away from their combination. I am informed that a reference may
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`be said to teach away when a person of ordinary skill in the relevant art, upon reading
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`the reference, would be discouraged from following the path set out in the reference,
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`or would be led in a direction divergent from the path that was taken by the patent
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`applicant. In general, a reference will teach away if it suggests that the line of
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`development flowing from the reference’s disclosure is unlikely to be productive of
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`the result sought by the patentee. I am informed that a reference teaches away, for
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`example, if (1) the combination would produce a seemingly inoperative device, or
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`(2) the references leave the impression that the product would not have the property
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`sought by the patentee. I also am informed, however, that a reference does not teach
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`away if it merely expresses a general preference for an alternative invention but does
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`not criticize, discredit, or otherwise discourage investigation into the invention
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`claimed.
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`18.
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`I am informed that even if a prima facie case of obviousness is
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`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention
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`would not have been obvious in view of these considerations, which include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
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`solution provided by the claimed invention; (d) deliberate copying of the invention
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`by others; (e) unexpected results achieved by the invention; (f) praise of the
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`invention by others skilled in the art; (g) lack of independent simultaneous invention
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`within a comparatively short space of time; (h) teaching away from the invention in
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`the prior art.
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`19.
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`I am further informed that secondary considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be based on prior art features.
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`The establishment of a nexus is a question of fact. While I understand that the Patent
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`Owner here has not offered any secondary considerations at this time, I will
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`supplement my opinions in the event that the Patent Owner raises secondary
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`considerations during the course of this proceeding.
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`III. OPINION
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`A. Level of a Person of Ordinary Skill in the Art
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`20.
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`I was asked to provide my opinion as to the level of skill of a person
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`having ordinary skill in the art (“PHOSITA”) of the ’251 Patent at the time of the
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`claimed invention, which counsel has told me to assume is July 26, 2007 for the
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`102(b) Petition and May 26, 2011 for the Priority Petition. In determining the
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`characteristics of a hypothetical person of ordinary skill in the art of the ’251 Patent,
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`I considered several factors, including the type of problems encountered in the art,
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`the solutions to those problems, the rapidity with which innovations are made in the
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`field, the sophistication of the technology, and the education level of active workers
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`in the field. I also placed myself back in the aforementioned time frames of the
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`claimed inventions and considered the colleagues with whom I had worked at that
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`time.
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`21.
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`In my opinion, a PHOSITA at the time of the claimed invention of the
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`’251 Patent under either priority date would have had at least a bachelor’s degree in
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`electrical engineering, computer engineering, computer science, or a similar field
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`with at least two years of experience in the research, design, development, and/or
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`testing of human-machine interfaces such as touch sensors and the firmware or
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`system software that govern said interfaces. A person with more direct industry
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`experience could accommodate having less formal education, and more formal
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`education in the field, such as a master’s degree with relevant specialization can
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`accommodate less direct industry experience. Such a PHOSITA would have been
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`capable of understanding the ’251 patent and the prior art references discussed
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`herein.
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`22. Based on my education, training, and professional experience in the field
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`of the claimed invention, I am familiar with the level and abilities of a person of
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`ordinary skill in the art at the time of the claimed invention. Additionally, I met at
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`least these minimum qualifications to be a person having ordinary skill in the art as
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`of the time of the claimed inventions of the ’251 Patent.
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`B. Claimed Invention in the ’251 Patent
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`23. The ’251 Patent relates to managing power consumption in touch-
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`controlled devices. ’251 Patent at Abstract. More particularly, the ’251 Patent
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`describes means for controlling a touch-controlled device comprising measuring the
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`capacitance of a sensing element (e.g., sense electrode) to determine whether an
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`object (e.g., user’s finger or stylus) is in proximity with a sensor and providing an
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`output signal to control the device, such as enabling a “switch-off function,” when a
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`user has not touched the sensor for a predetermined time. Id. at 2:55-63.
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`24.
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`In this regard, the capacitance of the sense electrode is affected by the
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`user’s finger or stylus and is output to a control circuit configured to provide an
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`output signal indicative of this measured change in capacitance. Id. at 4:24-39. The
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`control circuit then determines whether a user is no longer in proximity with the
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`sensor and based on a predetermined time duration, produces an output signal to
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`prevent a capacitance measurement circuit from continually measuring changes in
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`capacitance. Id. This allows the control circuit to “deactivate, turn-off, or power
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`down the capacitance measurement circuit where an apparatus has inadvertently
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`been left on or with the erroneous perception that a user is still present.” Id. at 4:55-
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`65 (referred to as an “auto-off” signal). For example, the ’251 patent provides
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`exemplary embodiments of well-known consumer devices implementing the
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`claimed power-saving functionality. Id. at 5:11-20:
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`The sensor of particular embodiments may be useful in various
`applications, for example in kitchen appliances, light switches,
`headsets, and other electronic consumer devices. For example, a coffee
`machine incorporating a sensor of particular embodiments may be
`programmed to power-down after a time period of, say, 30 minutes,
`where the coffee machine has been left on inadvertently.
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`25. Moreover, the claimed invention is operable to perform a “recalibration”
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`when the sensor is “powered up, when an object is determined to be in proximity
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`with the sensor for more than a timer setting, and/or when an override is released.”
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`Id. at 2:32-35. Figure 1 below depicts an exemplary arrangement of a sense electrode
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`interconnected with a programmable controller to effectuate the above-listed
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`functions:
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`Id. at Fig. 1.
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`C. Construction of the “touch screen” and “key touch on a/the touch
`screen” terms
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`i.
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`“touch screen”
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`26.
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`I understand that in an IPR proceeding, words in a claim are given their
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`plain meaning, which is the meaning understood by a person of ordinary skill in the
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`art in view of the patent and file history. The ’251 Patent, however, provides no
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`guidance on the meaning of “touch screen” and does not use the phrase “touch
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`screen” outside the claims and abstract. Despite this lack of guidance in the patent
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`itself, “touch screen” is a well-known and widely used term with an accepted
`
`meaning in the industry. As set forth in the next few paragraphs, a PHOSITA would
`
`have understood that the term “touch screen,” according to this well-accepted
`
`meaning, refers to a transparent touch-sensitive panel that overlays a display, such
`
`as an LCD display.
`
`27. To inform the meaning of touch screen, a PHOSITA would have looked
`
`to literary support accepted within the field. Such exemplary accepted literature
`
`includes Microsoft’s Computer Dictionary, which defines a touch screen as a
`
`“computer screen designed or modified to recognize the location of a touch on its
`
`surface” and analogizing this phrase to a “touch-sensitive display.” Microsoft
`
`Computer Dictionary 4th Ed. at 3-4. Similarly, Barron’s Dictionary of Computer and
`
`Internet Terms defines a “touchscreen” as “a computer screen that is sensitive to
`
`
`
`17
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`IPR2020-01000
`Apple EX1003 Page 17
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`
`
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`touch, so that the user can point to things on it by touching the screen itself, without
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`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
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`using a mouse.” Barron’s Computer Dictionary at 4. Further, a 2009 Planet Analog
`
`article, titled “Touchscreens 101: Understanding touchscreen technology and
`
`design” describes “six key elements” to every touchscreen, including a “touchscreen
`
`‘sensor’ [that] is a clear glass panel with a touch-responsive surface” and an LCD
`
`display mounted below the sensor panel. Touchscreens 101 at 2.
`
`28. Similarly, a PHOSITA would have looked to other patents and
`
`publications filed by Patent Owner to inform this understanding. Patent Owner’s
`
`own patent portfolio confirms the well-accepted meaning of “touch screen”
`
`discussed above. For example, U.S. Patent No. 8,599,150 (“the ’150 Patent”), which,
`
`like the ’251 Patent lists, Harald Philipp as an inventor, discloses that “[a]
`
`touchscreen includes touchscreen electrode elements distributed across an active
`
`area of a substrate, and the touchscreen overlays a display.” ’150 Patent at Abstract.
`
`The ’150 Patent explains the benefits realized by deploying a touch-sensitive device
`
`as a touchscreen:
`
`Touchscreens are often used as interfaces on small electronic devices,
`appliances, and other such electronic systems because the display
`behind the touchscreen can be easily adapted to provide instruction to
`the user and to receive various types of input, thereby providing an
`intuitive interface that requires very little user training to use
`effectively.
`
`
`
`18
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`IPR2020-01000
`Apple EX1003 Page 18
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`
`
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`Id. at 2:27-32. U.S. Patent No. 9,632,628 (“the ’628 Patent”), which also lists Harald
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`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
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`Philipp as an inventor, further notes that “[t]ouchscreen displays are able to detect a
`
`touch such as by a finger or stylus” and that the “[u]se of a touchscreen as part of a
`
`display enables a user to interact with an electronic application by touching the
`
`touchscreen.” ’628 Patent at 1:6-9. Finally, U.S. Patent No. 9,823,784 (“the ’784
`
`Patent”), which also lists Harald Philipp as an inventor, unambiguously explains,
`
`“[i]t will be understood that the display panel in combination with the touch sensor
`
`make a touch screen.” ’784 Patent at 10:35-37. Accordingly, in light of both the
`
`accepted literary evidence and Patent Owner’s own interpretations, a PHOSITA
`
`would have understood that the term “touch screen” refers to a transparent touch-
`
`sensitive panel that overlays a display, such as an LCD display.
`
`ii.
`
`“key touch on a/the touch screen”
`
`29. Similar to the term “touch screen,” the ’251 Patent provides no guidance
`
`on what constitutes a “key touch on a/the touch screen.” A PHOSITA would have
`
`understood that there are two possible interpretations based on this terminology.
`
`First, a “key touch on a/the touch screen” could be interpreted as any user-initiated
`
`touch on a touch screen. Second, a “key touch on a/the touch screen” could be
`
`interpreted as a user-initiated touch in a specific region (a defined “key”) of a
`
`touchscreen that is subdivided into multiple such regions/keys.
`
`
`
`19
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`IPR2020-01000
`Apple EX1003 Page 19
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`
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`30. Although the ’251 Patent does not teach or suggest touch screens, it does
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`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`
`
`
`provide support for a conclusion that a “key” could be the entire interface and need
`
`not be one of many specific defined “keys.” Namely, the ’251 Patent discloses that
`
`its power saving features “may be used in apparatus or devices with one touch
`
`key…[or] more than one key.” ’251 Patent at 17:13-17. The ’251 Patent does not
`
`teach or suggest keys/regions on a touch screen as those terms are understood in the
`
`art, but rather teaches only one or more basic on/off capacitive switches. Given the
`
`allowance for any number of “keys,” including one, a PHOSITA would have
`
`understood that a “key touch on a/the touch screen” is satisfied by any user-initiated
`
`“touch” on a touch screen, regardless where on the screen a touch was registered.
`
`This interpretation is supported by the prior art, including Patent Owner’s own
`
`patents. For example, U.S. Patent No. 9,024,790 (“the ’790 Patent”) unequivocally
`
`states that “[a] ‘key’ can also be a dimensional sensing surface such as an XY touch
`
`screen or a ‘trackpad’.” ’790 Patent at 4:51-52. The ’790 patent further discloses an
`
`embodiment illustrated in Figure 2 including a “capacitive touch screen area 6 with
`
`surrounding buttons 7” and explains that “the area 6 can be treated as a single key
`
`with a single signal strength for purposes of” practicing the alleged invention. Id. at
`
`5:59-64. Moreover, I have been informed that consistent with these disclosures, in a
`
`prior ITC investigation involving the ’790 Patent, Patent Owner agreed that “key”
`
`
`
`20
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`IPR2020-01000
`Apple EX1003 Page 20
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`
`
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`can consist of a “dimensional sensing surface such as an XY touch screen or a
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`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
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`‘trackpad.’” ITC Markman Order at 21.
`
`31. The second possible construction is based on the fact that selecting
`
`specific keys on a touch screen comprising multiple such defined keys is well-
`
`understood in the art. For example, the ’628 Patent describes examples of these
`
`specific keys for selection on a touchscreen:
`
`Touch sensitive devices such as touchscreen displays may be used in a
`variety of applications, from automatic teller machines (ATM
`machines), home appliances, personal digital assistants and cell phones,
`and other such devices. One example cellular telephone and PDA
`device is illustrated in FIG. 16. A cellular telephone device 1601
`includes a touchscreen display 1602 comprising a significant portion of
`the largest surface of the device. The large size of the touchscreen
`enables the touchscreen to present a wide variety of data, including
`a keyboard, a numeric keypad, program or application icons, and
`various other interfaces as desired. The user may interact with the
`device by touching with a single finger, such as to select a program
`for execution or to type a letter on a keyboard displayed on the
`touchscreen display assembly 1602, or may use multiple touches such
`as to zoom in or zoom out when viewing a document or image. In other
`devices, such as home appliances, the display may not change or may
`change only slightly during device operation, and may recognize only
`single touches.
`
`
`
`21
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`IPR2020-01000
`Apple EX1003 Page 21
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`
`
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`’628 Patent at 8:62-9:13 (emphasis added). U.S. Patent Publication No.
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`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`
`2007/0109276 to Kim et al. (“Kim”), filed on November 17, 2006, similarly
`
`discussed a “method for allocating/arranging keys on a touch-screen” involving
`
`“establishing a plurality of sensing z
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