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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SONY CORPORATION, AND
`SONY MOBILE COMMUNICATIONS INC.,
`Petitioners
`
`v.
`
`NEODRON LTD.
`Patent Owner.
`
`
`
`
`DECLARATION OF DR. BENJAMIN B. BEDERSON IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,749,251
`
`Petitioners Samsung and Sony Ex-1002, 0001
`
`

`

`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................................ 2
`II.
`INFORMATION CONSIDERED ............................................................... 11
`III.
`IV. RELEVANT LEGAL STANDARDS .......................................................... 12
`A.
`Claim Interpretation ........................................................................... 12
`B.
`Perspective of One of Ordinary Skill in the Art ................................ 12
`C.
`Anticipation ........................................................................................ 13
`
`D. Obviousness ....................................................................................... 13
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 16
`V.
`VI. SUMMARY OF MY OPINIONS ................................................................ 17
`VII. THE CHALLENGED PATENT .................................................................. 18
`VIII. PATENT PROSECUTION HISTORY ........................................................ 20
`IX. PRIORITY DATE ........................................................................................ 20
`X.
`CLAIM CONSTRUCTION ......................................................................... 21
`A.
`“key touch on the touch screen” (claims 1, 10, 16) ........................... 21
`XI. BRIEF DESCRIPTION OF THE PRIOR ART ........................................... 22
`A. Mese ................................................................................................... 22
`B.
`Oh ....................................................................................................... 24
`C.
`Chaudhri ............................................................................................. 26
`XII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS .................................................................................................. 28
`A.
`Claims 6 and 15 are rendered obvious by Mese in view of Oh ......... 28
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`-i-
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`Petitioners Samsung and Sony Ex-1002, 0002
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`

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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`Claim 1 .................................................................................... 28
`1.
`Claim 6 .................................................................................... 35
`2.
`Claim 10 .................................................................................. 37
`3.
`Claim 15 .................................................................................. 38
`4.
`5. Motivation to Combine Mese and Oh ..................................... 39
`Claims 6 and 15 are rendered obvious by Mese in view of Oh in
`further view of Chaudhri. ................................................................... 40
`1.
`Claim 1 .................................................................................... 40
`2.
`Claim 6 .................................................................................... 44
`
`B.
`
`Claim 10 .................................................................................. 45
`3.
`Claim 15 .................................................................................. 46
`4.
`5. Motivation to Combine Mese, Chaudhri, and Oh ................... 46
`XIII. CONCLUSION ............................................................................................ 49
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`-ii-
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`Petitioners Samsung and Sony Ex-1002, 0003
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`

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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`I, Dr. Benjamin B. Bederson, declare as follows:
`
`1.
`
`I.
`
`INTRODUCTION
`2.
`I have been retained by Samsung Electronics Co., Ltd., Samsung
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`Electronics America, Inc., Sony Corp., and Sony Mobile Communications Inc.
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`(collectively, “Petitioners”) as an independent expert consultant in this inter partes
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`review (“IPR”) proceeding before the United States Patent and Trademark Office
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`(“PTO”).
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`3.
`
`I have been asked by Petitioners’ counsel (“Counsel”) to consider
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`whether certain references teach or suggest the features recited in Claims 6 and 15
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`of U.S. Patent No. 8,749,251 (“the ’251 Patent”) (Ex-1001)1. My opinions and the
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`bases for my opinions are set forth below.
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`4.
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`I am being compensated at my ordinary and customary consulting rate
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`for my work, which is $600 per hour. My compensation is in no way contingent
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`on the nature of my findings, the presentation of my findings in testimony, or the
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`outcome of this or any other proceeding. I have no other financial interest in this
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`proceeding.
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`
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` Where appropriate, I refer to exhibits that I understand are attached to the petition
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` 1
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`for IPR of the ’251 Patent.
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`1
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`Petitioners Samsung and Sony Ex-1002, 0004
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`

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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`
`II. BACKGROUND AND QUALIFICATIONS
`5.
`All of my opinions stated in this declaration are based on my own
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`personal knowledge and professional judgment. In forming my opinions, I have
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`relied on my knowledge and experience in designing, developing, researching, and
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`teaching the technology referenced in this declaration.
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`6.
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`I am over 18 years of age and, if I am called upon to do so, I would be
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`competent to testify as to the matters set forth herein. I understand that a copy of
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`my current curriculum vitae, which details my education and professional and
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`academic experience, is being submitted as Ex-1003. The following provides a
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`brief overview of some of my experience that is relevant to the matters set forth in
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`this declaration.
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`7.
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`I am currently Professor Emeritus of Computer Science at the
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`University of Maryland (“UMD”). From 2014 to 2018, I was the Associate
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`Provost of Learning Initiatives and Executive Director of the Teaching and
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`Learning Transformation Center at the UMD. I am a member and previous
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`director of the Human-Computer Interaction Lab (“HCIL”), the oldest and one of
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`the best known Human-Computer Interaction (“HCI”) research groups in the
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`country. I was also co-founder and Chief Scientist of Zumobi, Inc. from 2006 to
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`2014, a Seattle-based startup that is a publisher of content applications and
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`advertising platforms for smartphones. I am also co-founder and co-director of the
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`2
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`Petitioners Samsung and Sony Ex-1002, 0005
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`

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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`International Children’s Digital Library (“ICDL”), a web site launched in 2002 that
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`provides the world’s largest collection of freely available online children’s books
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`from around the world with an interface aimed to make it easy for children and
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`adults to search and read children’s books online. I am also cofounder and Chief
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`Technology Officer of Hazel Analytics, a data analytics company to improve food
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`safety and better public health whose product sends alerts in warranted
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`circumstances. In addition, I have for more than 15 years consulted for numerous
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`companies in the area of user interfaces, including Microsoft, the Palo Alto
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`Research Center, Sony, Lockheed Martin, Hillcrest Labs, and NASA Goddard
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`Space Flight Center.
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`8.
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`The devices and methods claimed in the ’251 Patent generally relate
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`to touch sensors that can be used in touchscreen devices. For more than 30 years, I
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`have studied, designed, and worked in the field of computer science and HCI. My
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`experience includes 30 years of teaching and research, with research interests in
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`HCI and the software and technology underlying today’s interactive computing
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`systems. This includes the design and implementation of hardware and software
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`systems including the use of capacitive and other sensors, and interactive
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`applications on a range of devices, including embedded systems, controllers, smart
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`phones and PDAs.
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`9.
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`At UMD, I am focused primarily on the area of HCI, a field that
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`Petitioners Samsung and Sony Ex-1002, 0006
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`

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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`relates to the development and understanding of computing systems to serve users’
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`needs. Researchers and practitioners in this field are focused on making
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`universally usable, useful, efficient, and appealing systems to support people in
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`their wide range of activities. My approach is to balance the development of
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`innovative technology that serves people’s practical needs. Example systems
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`following this approach that I have built include Cortex-I (1992 embedded
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`computer vision system that sensed licensed plates with custom motor, camera and
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`controller), Audio Augmented Reality (1995 embedded system for sensing a user’s
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`location and playing audio suited to that location), Fisheye Menus (2000 software
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`for sensing movement within and selection of linear list of items in a menu),
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`PhotoMesa (2001 software for end users to browse personal photos), DateLens
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`(2002 software for end users to use their mobile devices to efficiently access their
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`calendar information), SlideBar (2005 linear sensor to control scrolling),
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`LaunchTile (2005 “home screen” software for mobile devices to allow users to
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`navigate apps in a zoomable environment), SpaceTree (2001 software for end users
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`to efficiently browse very large hierarchies), ICDL (as described above), and
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`StoryKit (a 2009 iPhone app for children to create stories).
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`10.
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`In April 2000, I visited Professors Wayne Westerman and John Elias
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`at the University of Delaware and gave a talk entitled “Zoomable User Interfaces
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`and Single Display Groupware.” This resulted in a collaboration with Professor
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`4
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`Petitioners Samsung and Sony Ex-1002, 0007
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`Westerman, graduate student Hilary Browne, and others where we used their
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`FingerWorks capacitive Multi-Touch Surface as the input device for a multi-touch
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`finger painting program for children. The project used this input device to support
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`a computer painting program that allowed children to paint with their fingers by
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`directly touching the sensing surface. In contrast to the mouse input more typically
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`used in this time period, this approach enabled us to create a more natural
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`interaction environment. This work, depicted in the figure below, was published in
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`a September 2000 technical report.2
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`
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`
`
`
`
` Hilary Browne et al., Designing a Collaborative Finger Painting Application for
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` 2
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`Children, HCIL-2000-17, CS-TR-4184, UMIACS-TR-2000-66 (Sept. 2000),
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`available at https://hcil.umd.edu/pub-perm-link/?id=2000-17 (Ex-1032).
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`5
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`Petitioners Samsung and Sony Ex-1002, 0008
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`
`Ex-1032, Figure 1.
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`
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`11. Throughout the 2000’s, I worked on a range of interfaces for mobile
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`devices with a focus on interface design for touch interfaces, including those with
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`capacitive sensors. During this period, it became apparent that some positions on a
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`screen were easier to access than others, especially when used with a single hand.
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`To understand this issue, I led a range of studies that resulted in two papers
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`6
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`Petitioners Samsung and Sony Ex-1002, 0009
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`published in 20063 and 20074. The following figure summarizes the results of one
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`of the studies, and shows that generally speaking, when using a single hand, the
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`center of the screens were easier for users to touch than the edges of the screen,
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`and that the corners of the screen were the hardest positions to touch.
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`
`
` Pekka Parhi, Amy K. Karlson, and Benjamin B. Bederson. 2006. Target size
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` 3
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`study for one-handed thumb use on small touchscreen devices. In Proceedings of
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`the 8th Conference on Human-Computer Interaction with Mobile Devices and
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`Services (MobileHCI ’06). Association for Computing Machinery, New York, NY,
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`USA, 203–210. DOI:https://doi.org/10.1145/1152215.1152260 (Ex-1033).
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`4 Karlson, Amy & Bederson, Benjamin & Contreras-Vidal, José. (2008).
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`Understanding One-Handed Use of Mobile Devices. Handbook of Research on
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`User Interface Design and Evaluation for Mobile Technology. 86-101.
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`DOI:10.4018/978-1-59904-871-0.ch006 (Ex-1034).
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`7
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`Petitioners Samsung and Sony Ex-1002, 0010
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`
`
`
`Ex-1034 at Table 2.
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`12. This work on touch screen mobile devices led to my creation of
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`Zumobi in 2006, where I was responsible for investigating new software platforms
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`and developing new user interface designs that provide efficient and engaging
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`interfaces to permit end users to access a wide range of content on mobile
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`platforms (including the iPhone and Android-based devices). For example, I
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`Petitioners Samsung and Sony Ex-1002, 0011
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`designed and implemented software called “Ziibii,” a “river” of news for iPhone
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`that used a capacitive sensor for controlling linear movement through news;
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`software called “ZoomCanvas,” a zoomable user interface for several iPhone apps;
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`and iPhone apps including “Inside Xbox” for Microsoft and Snow Report for REI.
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`At the ICDL, I have since 2002 been the technical director responsible for the
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`design and implementation of the web site, www.childrenslibrary.org (originally at
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`www.icdlbooks.org). In particular, I have been closely involved in designing the
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`user interface as well as the software architecture for the web site since its
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`inception in 2002.
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`13. Beginning in the mid-1990s, I have been responsible for the design
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`and implementation of numerous other web sites in addition to the ICDL. For
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`example, I designed and built my own professional web site when I was an
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`Assistant Professor of Computer Science at the University of New Mexico in 1995
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`and have continued to design, write the code for, and update both that site (which I
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`moved to the UMD in 1998, currently at http://www.cs.umd.edu/~bederson/) as
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`well as numerous project web sites, such as Pad++,
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`http://www.cs.umd.edu/hcil/pad++/. I received the Janet Fabri Memorial Award
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`for Outstanding Doctoral Dissertation for my Ph.D. work in robotics and computer
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`vision. I have combined my hardware and software skills throughout my career in
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`HCI research, building various interactive electrical and mechanical systems that
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`Petitioners Samsung and Sony Ex-1002, 0012
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`couple with software to provide an innovative user experience.
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`14. My work has been published extensively in more than 160 technical
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`publications, and I have given about 100 invited talks, including 9 keynote
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`lectures. I have won a number of awards including the Brian Shackel Award for
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`“outstanding contribution with international impact in the field of HCI” in 2007,
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`and the Social Impact Award in 2010 from the Association for Computing
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`Machinery’s (“ACM”) Special Interest Group on Computer Human Interaction
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`(“SIGCHI”). ACM is the primary international professional community of
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`computer scientists, and SIGCHI is the primary international professional HCI
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`community. I have been honored by both professional organizations. I am an
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`“ACM Distinguished Scientist,” which “recognizes those ACM members with at
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`least 15 years of professional experience and 5 years of continuous Professional
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`Membership who have achieved significant accomplishments or have made a
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`significant impact on the computing field.” I am a member of the “CHI
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`Academy,” which is described as follows: “The CHI Academy is an honorary
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`group of individuals who have made substantial contributions to the field of HCI.
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`These are the principal leaders of the field, whose efforts have shaped the
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`disciplines and/or industry, and led the research and/or innovation in human-
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`computer interaction.” The criteria for election to the CHI Academy are: (1)
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`cumulative contributions to the field; (2) impact on the field through development
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`Petitioners Samsung and Sony Ex-1002, 0013
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`of new research directions and/or innovations; and (3) influence on the work of
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`others.
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`15.
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`I have appeared on radio shows numerous times to discuss issues
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`relating to user interface design and people’s use and frustration with common
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`technologies, web sites, and mobile devices. My work has been discussed and I
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`have been quoted by mainstream media around the world over 120 times, including
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`by the New York Times, the Wall Street Journal, the Washington Post, Newsweek,
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`the Seattle Post Intelligencer, the Independent, Le Monde, NPR’s All Things
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`Considered, New Scientist Magazine, and MIT’s Technology Review.
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`16.
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`I have designed, programmed, and publicly deployed dozens of user-
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`facing software products that have cumulatively had millions of users. My work is
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`cited by several major companies, including Amazon, Apple, Facebook, Google,
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`and Microsoft. I am a named inventor on 12 U.S. patents and 18 U.S. patent
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`applications. The patents are generally directed to user interfaces/experience.
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`17.
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`I received a B.S. degree in Computer Science with a minor in
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`Electrical Engineering in 1986 from the Rensselaer Polytechnic Institute. I
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`received M.S. and Ph.D. degrees in Computer Science in 1989 and 1992, both
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`from New York University.
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`III.
`
`INFORMATION CONSIDERED
`18.
`In preparation for this declaration, I have considered the materials
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`11
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`Petitioners Samsung and Sony Ex-1002, 0014
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`discussed in this declaration, including, for example, the ’251 Patent, the
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`references cited by the ’251 Patent, the prosecution histories of the ’251 Patent and
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`applications from which it derives (including the references cited therein), various
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`background articles and materials referenced in this declaration, and the prior art
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`references identified in this declaration. In addition, my opinions are further based
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`on my education, training, experience, and knowledge in the relevant field.
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`IV. RELEVANT LEGAL STANDARDS
`19.
`I am not an attorney and offer no legal opinions. For the purposes of
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`this Declaration, I have been informed about certain aspects of the law that are
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`relevant to my analysis, as summarized below.
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`A. Claim Interpretation
`20.
`I have been informed and understand that in an IPR proceeding,
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`claims are to be interpreted according to the Phillips claim construction standard. I
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`have been informed and understand that claim construction is a matter of law and
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`that the final claim constructions for this proceeding will be determined by the
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`Patent Trial and Appeal Board (“PTAB”).
`
`B.
`21.
`
`Perspective of One of Ordinary Skill in the Art
`I have been informed and understand that a patent is to be understood
`
`from the perspective of a hypothetical “person of ordinary skill in the art”
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`(“POSA”). Such an individual is considered to possess normal skills and
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`Petitioners Samsung and Sony Ex-1002, 0015
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`knowledge in a particular technical field (as opposed to being a genius). I
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`understand that in considering what the claims of a patent require, what was known
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`prior to that patent, what a prior art reference discloses, and whether an invention
`
`is obvious or not, one must use the perspective of such a POSA.
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`C. Anticipation
`22.
`I have been informed and understand that a patent claim is anticipated
`
`under 35 U.S.C. § 102, and is therefore invalid, if all of the elements of the claim
`
`are disclosed by a single prior art reference.
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`23.
`
`I understand that a claim is anticipated if each and every element as
`
`set forth in the claim is found in a single prior art reference. I understand that
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`anticipation does not require that the prior art use the same terminology recited
`
`within the patent claims. Moreover, I understand that even if a prior art reference
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`does not expressly disclose a limitation, it anticipates that limitation if a POSA
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`would have understood the prior art to disclose the limitation and could combine
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`the prior art description with his own knowledge to make the claimed invention.
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`D. Obviousness
`24.
`I have been informed and understand that a patent claim is obvious
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`under 35 U.S.C. § 103, and therefore invalid, if the claimed subject matter, as a
`
`whole, would have been obvious to a POSA as of the priority date of the patent
`
`based on one or more prior art references and/or the knowledge of a POSA.
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`13
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`Petitioners Samsung and Sony Ex-1002, 0016
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`I understand that an obviousness analysis must consider (1) the scope
`
`25.
`
`and content of the prior art, (2) the differences between the claims and the prior art,
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`(3) the level of ordinary skill in the pertinent art, and (4) secondary considerations,
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`if any, of non-obviousness (such as unexpected results, commercial success, long-
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`felt but unmet need, failure of others, copying by others, and skepticism of
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`experts).
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`26.
`
`I understand that a prior art reference may be combined with other
`
`references to disclose each element of the invention under 35 U.S.C. § 103. I
`
`understand that a reference may also be combined with the knowledge of a POSA,
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`and that this knowledge may be used to combine multiple references. I further
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`understand that a POSA is presumed to know the relevant prior art. I understand
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`that the obviousness analysis may take into account the inferences and creative
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`steps that a POSA would employ.
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`27.
`
`In determining whether a prior art reference would have been
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`combined with other prior art or other information known to a POSA, I understand
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`that the following principles may be considered:
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`a. whether the references to be combined involve non-analogous art;
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`b. whether the references to be combined are in different fields of
`
`endeavor than the alleged invention in the Patent;
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`c. whether the references to be combined are reasonably pertinent to the
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`problems to which the inventions of the Patent are directed;
`
`d. whether the combination is of familiar elements according to known
`
`methods that yields predictable results;
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`e. whether a combination involves the substitution of one known
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`element for another that yields predictable results;
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`f. whether the combination involves the use of a known technique to
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`improve similar items or methods in the same way that yields
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`predictable results;
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`g. whether the combination involves the application of a known
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`technique to a prior art reference that is ready for improvement, to
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`yield predictable results;
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`h. whether the combination is “obvious to try”;
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`i. whether the combination involves the known work in one field of
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`endeavor prompting variations of it for use in either the same field or
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`a different one based on design incentives or other market forces,
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`where the variations are predictable to a POSA;
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`j. whether there is some teaching, suggestion, or motivation in the prior
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`art that would have led one of ordinary skill in the art to modify the
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`prior art reference or to combine prior art reference teachings to
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`arrive at the claimed invention;
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`Petitioners Samsung and Sony Ex-1002, 0018
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`k. whether the combination requires modifications that render the prior
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`art unsatisfactory for its intended use;
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`l. whether the combination requires modifications that change the
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`principle of operation of the reference;
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`m. whether the combination is reasonably expected to be a success; and
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`n. whether the combination possesses the requisite degree of
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`predictability at the time the invention was made.
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`28.
`
`I understand that in determining whether a combination of prior art
`
`references renders a claim obvious, it is helpful to consider whether there is some
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`teaching, suggestion, or motivation to combine the references and a reasonable
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`expectation of success in doing so. I understand, however, that a teaching,
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`suggestion, or motivation to combine is not required.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`29.
`I understand that in ITC investigation In the Matter of Certain
`
`Capacitive Touch-Controlled Mobile Devices, Computers, and Components
`
`Thereof, Investigation No. 337-TA-1193 (“1193 ITC Investigation”), the private
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`parties and Staff have agreed that with respect to the ’251 Patent and the other
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`patents at issue in that investigation, one of ordinary skill in the art would have had
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`a bachelor's degree in electrical engineering, computer engineering, computer
`
`science, or a related field, and at least two years of experience in the research,
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`Petitioners Samsung and Sony Ex-1002, 0019
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`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`design, development, and/or testing of touch sensors, human-machine interaction
`
`and interfaces, and/or graphical user interfaces, and related firmware and software,
`
`or the equivalent, with additional education substituting for experience and vice
`
`versa. I agree with this statement of the level of skill in the art.
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`30.
`
`In determining the level of ordinary skill in the art, I considered, for
`
`example, the type of problems encountered in the art, prior art solutions to those
`
`problems, the rapidity with which innovations are made, the sophistication of the
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`technology, and the educational level of active workers in the field.
`
`31.
`
`I met the definition of a POSA in 2006. I also had greater knowledge
`
`and experience than a POSA. I worked with POSAs in 2006, and I am able to
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`render opinions from the perspective of a POSA based on my knowledge and
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`experience. My opinions concerning the ’251 Patent claims and the prior art are
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`from the perspective of a POSA, as set forth above.
`
`VI. SUMMARY OF MY OPINIONS
`32.
`I have been asked to consider whether certain claims of the ’251
`
`Patent are anticipated or obvious over certain prior art references. As explained
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`below in detail in this declaration, it is my opinion that:
`
`•
`
`Claims 6 and 15 are rendered obvious by U.S. Patent No. 5,396,443
`(“Mese”) (Ex-1005) in view of Korean Laid-Open Publication No. 10-
`2005-0045541 (“Oh”) (Ex-1006); and
`
`17
`
`
`
`Petitioners Samsung and Sony Ex-1002, 0020
`
`

`

`•
`
`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`Claims 6 and 15 are rendered obvious by Mese in view of U.S. Patent
`Publication No. 2007/0150842 A1 (“Chaudhri”) (Ex-1007) in further
`view of Oh.
`VII. THE CHALLENGED PATENT
`33. The ’251 Patent was filed on May 26, 2011 and is entitled “Proximity
`
`Sensor.” Ex-1001, cover. The ’251 Patent states that it is a continuation of
`
`application No. 12/179,769, filed July 25, 2008 (now U.S. Patent No. 7,952,366),
`
`and claims priority to Provisional Application No. 60/952,053, filed July 26, 2007.
`
`Id. For purposes of this declaration, I have assumed that the ’251 Patent is entitled
`
`to the July 26, 2007 priority date.
`
`34. The ’251 Patent “generally relates to proximity sensors.” Ex-1001,
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`1:13. According to the ’251 Patent, “[c]apacitive position sensors have recently
`
`become increasingly common and accepted in human interfaces and for machine
`
`control.” Id., 1:17-19. “A capacitive sensing microprocessor may typically be
`
`comprised in touch-controlled devices which are arranged to provide an ‘on’
`
`output signal when a finger is adjacent to a sensor and an ‘off’ output signal when
`
`a finger is not adjacent to a sensor.” Id., 1:29-33. However, “[s]ome touch-
`
`controlled devices remain ‘on’ or ‘active’ despite the user having moved away
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`from the device or a particular function no longer being required. This results in
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`the device consuming a large amount of power which is not efficient.” Id., 1:37-
`
`41.
`
`18
`
`
`
`Petitioners Samsung and Sony Ex-1002, 0021
`
`

`

`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`The ’251 Patent addresses this inefficiency by describing a touch sensor with
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`a “control circuit” that “can determine whether an object or a user’s finger is no
`
`longer in proximity with the sensor and based on a predetermined time duration,
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`the control circuit can produce an output signal automatically to prevent the
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`capacitance measurement circuit from continually measuring changes in
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`capacitance due to, for example, the perceived presence of an object in proximity
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`with the sensor.” Id., 4:47-54. The ’251 Patent refers to this feature as an “auto-
`
`off” feature, and the “signal for preventing the capacitance measurement circuit
`
`from continually measuring changes in capacitance” as “an auto-off signal.” Id.,
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`4:55-62. Using the “auto-off” feature, “the control circuit is able to deactivate,
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`turn-off, or power down the capacitance measurement circuit where an apparatus
`
`has inadvertently been left on or with the erroneous perception that a user is still
`
`present.” Id. An example chip for implementing the “auto-off” feature is shown in
`
`Figure 1 of the ’251 Patent:
`
`
`
`19
`
`
`
`Petitioners Samsung and Sony Ex-1002, 0022
`
`

`

`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`
`Fig. 1
`
`Id., Fig. 1, 3:13-15 (“FIG. 1 schematically shows sense electrode connections for
`
`an example chip for implementing an auto-off function in particular
`
`embodiments.”). The ’251 Patent refers to the example chip embodiment “by
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`product name QT102.” Id., 4:14-15. “The QT102 is a single key device featuring
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`a touch on/touch off (toggle) output with a programmable auto switch-off
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`capability.” Id., 5:48-50.
`
`VIII. PATENT PROSECUTION HISTORY
`35. The ’251 Patent issued from U.S. Patent Application No. 13/116,764,
`
`filed May 26, 2011. Ex-1001, cover. The ’764 application was a continuation of
`
`application No. 12/179,769, filed July 25, 2008 (now U.S. Patent No. 7,952,366),
`
`which claims priority to Provisional Application No. 60/952,053, filed July 26,
`
`2007. Id.
`
`36. The ’251 Patent was allowed without any rejections from the PTO.
`
`Following the filing of the initial application, the Applicant filed a preliminary
`
`amendment correcting the provisional application filing date (Ex-1004 at 63-66)
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`and submitted replacement sheets for Figures 15 and 16 (Ex-1004 at 79-81). The
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`Notice of Allowance was then mailed on January 31, 2014. Id., 244-251.
`
`IX. PRIORITY DATE
`37. For purposes of my analysis, I apply the date of the provisional patent
`
`20
`
`
`
`Petitioners Samsung and Sony Ex-1002, 0023
`
`

`

`Declaration of Dr. Benjamin B. Bederson
`U.S. Patent No. 8,749,251
`application, filed July 26, 2007. I take no position on the proper priority date for
`
`each claim of the ’251 Patent.
`
`X. CLAIM CONSTRUCTION
`38.
`I interpret the claims of the ’251 Patent according to the Phillips claim
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`construction standard. 83 Fed. Reg. 51340, 51340-44 (Oct. 11, 2018); Phillips v.
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). I understand that under the Philips
`
`standard, words of a claim are generally given their ordinary and customary
`
`meaning, which is the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention in view of the patent’s
`
`specification and file history.
`
`A.
`“key touch on the touch screen” (claims 1, 10, 16)
`39. The ’251 Patent does not contain any disclosure or definition of what
`
`constitutes a “key touch” on a touch screen, and how that is different from a
`
`“touch” on a touch screen. The embodiment disclosed in the ’251 Pate