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`J Sughrue
`SUGHRLE MION, PlrLC
`
`2100 Pennsylvania Avenue, NW
`Washington. DC 20037-3213
`”02.29170“,
`F202.293.7860
`www.5ughrue.com
`
`William H. Mandlr
`T 202.663.7458
`wmandir@sughrue.com
`
`January 18, 2017
`
`VIA HAND DELIVERY
`
`Michelle K. Lee
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`
`Madison Building East, 10820
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`Re:
`
`Case: [PR2015-01175 -- APPLE INC. and MOTOROLA MOBILITY, LLC.
`Petitioners v. GLOBAL TOUCH SOLUTIONS, LLC, Patent
`Owner -— US. Patent No. 8,288,952
`‘
`United States Patent and Trademark Office
`
`Dear Commissioner Lee:
`
`Enclosed with this letter are three copies of Patent Owner 3 Notice of Appeal and the
`Final Written Decision in the captioned IPR. Copies of this Notice were lodged today with the
`Court of Appeals of the Federal Circuit.
`
`Please file-stamp the extra copy of this Notice and return to our paralegal.
`
`The Notice of Appeal was electronically filed with the Patent Trial and Appeal. We will
`be entering appearances in the appeal. Please let us know of any questions, and thank you for
`your assistance
`
`Very truly yours
`
`
`///
`
`William H. Mandir
`Counsel for Patent Owner
`
`wmandir@su hrue.com
`202—663-7458
`
`Cc:
`
`Robert Steinberg
`Matthew J. Moore
`Gabriel S. Gross
`Phillip E. Morton
`DeAnna Allen
`Joseph M. Drayton
`
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`”J ~Sughrue
`
`SUGHRUE MION, PLLC
`
`bob.stcinberg@ lw.com
`matthewmoore @lw.com
`
`gabe. gross @lw.com
`pmorton @cooley.com
`dallen@cooley.com
`jdrayton@cooley.com
`Counsel for Petitioner APPLE INC. and MOTOROLA MOBILITY, LLC.
`
`

`

`Best Available Copy
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC. and MOTOROLA MOBILITY, LLC
`Petitioners
`
`V.
`
`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`
`
`
`Case IPR2015—01175
`
`Patent 8,288,952
`
`PATENT OWNER'S NOTICE OF APPEAL
`
`Director of the United States Patent and Trademark Office
`do Office of the General Counsel
`Madison Building East, 10320
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`'9;
`~.-¢
`ii:
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`53
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`£35,3-”
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`Patent Owner Global Touch Solutions, LLC. ("Global Touch Soliifilons") Ca6
`
`,-.,
`i ‘3
`{2-
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`I,
`J‘
`‘
`
`'
`
`hereby gives notice pursuant to 35 U.S.C. §§ 141 and 142 and 37 CPR. §§
`
`90.2(a), 90.3 and 104.2 of its appeal to the United States Court of Appeals for the
`
`Federal Circuit from the Final Written Decision, Paper 35, of the Patent Trial and
`
`Appeal Board (“the Board”), entered November 16, 2016, and from all orders,
`
`decisions, rulings, and opinions, regarding Global Touch Solutions‘ US. Patent
`
`No. 8,288,952 (“the ‘952 Patent”).
`
`

`

`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Global Touch Solutions
`
`further indicates that the issues on appeal include, but are not limited to, the
`
`following:
`
`0 Whether the Board erred in its determination that claims 1-4, 14, 16,
`
`17, 19, 2224, 26, 27, and 38—40 of the ’952 Patent are unpatentable
`
`under 35 U.S.C. § 103(a), and any other finding or determination
`
`(legal or factual) supporting or relating to this determination.
`
`Global Touch Solutions reserves the right to challenge any finding or V
`
`determination supporting or related to the issues listed above, and to challenge any
`
`other issues decided adversely to Global Touch Solutions in the Final Written
`
`Decision and/or any orders, decisions or rulings underlying the final written
`
`decision.
`
`Copies of Patent Owner Global Touch Solutions' Notice of Appeal are being
`
`filed simultaneously with the Director of the United States Patent and Trademark
`
`Office, the Patent Trial and Appeal Board, and the Clerk of the United States Court
`
`of Appeals for the Federal Circuit.
`
`Respectfully submitted,
`
`Date: January 18, 2017
`
`‘
`
`By:
`
`/William H. Mandir/
`William H. Mandir
`
`Reg. No. 32,156 '
`Lead Counsel for Patent Owner
`
`

`

`Date: January 18, 2017
`
`By:
`
`/Peter S. Park/
`Peter S. Park
`
`Reg. No. 60,719
`Back-up Counsel for Patent Owner
`
`Date: January 18, 2017
`
`By:
`
`/Brian K. Shelton/
`Brian K. Shelton
`
`Reg. No. 50,245
`. Back-up Counsel for Patent Owner
`
`Date: January 18, 2017
`
`By:
`
`/Fadi N. Kiblawi/
`Fadi N. Kjblawi
`
`Reg. No. 61,973
`Back—up Counsel for Patent Owner
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________‘________.____——————
`
`APPLE INC. and MOTOROLA MOBILITY, LLC
`Petitioners
`
`V.
`
`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`
`_____________________.___.__————————————————-—
`
`Case IPR2015-01 175
`
`Patent 8,288,952
`
`CERTIFICATE OF FILING AND SERyICE
`
`Filed Electronically via PRPS
`
`The undersigned hereby certifies that the foregoing Patent Owner Global
`
`Touch Solutions'Notice of Appeal was filed with the Patent Trial and Appeal
`
`Board on January 18, 2017, using the PRPS System pursuant to 37 C.F.R.
`
`§42.6(b)(1).
`
`The undersigned hereby further certifies that on January 18, 2017, three true
`
`and correct copies of the foregoing Patent Owner Global Touch Solutions' Notice
`
`'of Appeal and the Final Written Decision (along with the fee set forth in Federal
`
`Circuit Rule 52) were filed with the Federal Circuit via hand-delivery at the
`
`following address:
`
`

`

`Clerk of the Court
`
`United States Court of Appeal for the Federal Circuit
`717 Madison Place, N.W., Room 401
`Washington, DC 20439
`
`The undersigned hereby further certifies that on January 18, 2017, two true
`
`and correct copies of the foregoing Patent Owner Global Touch Solutions’ Notice
`
`of Appeal and the Final Written Decision were served on the Director of the US.
`
`Patent and Trademark Office via hand delivery at the following address:
`
`Director of the United States Patent and Trademark Office
`
`Michelle K. Lee
`
`c/o Office of the General Counsel
`
`Madison BuildingEast, IOBZO
`600 Dulany Street
`‘
`Alexandria, VA 22314-5793
`
`The undersigned hereby further certifies that on January 18, 2017, a copy of
`
`the foregoing Patent Owner Global Touch Solutions’ Notice of Appeal was served
`
`via email on counsel for the Petitioner:
`
`Bob Steinberg
`Matthew Moore
`
`Gabriel Gross
`
`James R. Bender
`
`bob.steinberg@lw.com
`matthew.moore@lw.com
`
`gabe.gross@1w.com
`1ames.bender@lw.com
`LATHAM & WATKINS LLP
`
`Phillip Morton
`DeAnna Allen
`
`pmorton @eooley.com
`dallen @coolcy.com
`
`

`

`COOLEY LLP
`
`Respectfully submitted,
`
`/Peter S. Park/
`
`Peter S. Park
`
`Reg. No. 60,719
`Attorney for Patent Owner
`pspark@su ghrue.com
`SUGHRUE MION PLLC
`
`2100 Pennsylvania Ave NW
`Suite 800
`'
`
`'
`
`Washington, DC 20037
`Tel: (202) 857-3358
`Fax: (202) 293—7860
`
`

`

`Trials@uspto.gov
`571—272—7822
`
`Paper 35
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD .
`
`APPLE INC. and MOTOROLA MOBILITY LLC,
`
`Petitioner,
`
`V.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`
`Patent Owner.
`
`Case IPR2015-01175
`
`Patent 8,288,952 B2
`
`Before IUSTIN BUSCH, LYNNE E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges
`
`BUSCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 as. C. § 318(a) and 37 C.F.R. § 42. 73
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Apple Inc. and Motorola Mobility LLC (collectively, “Petitioner”) challenge
`
`the patentability of claims 1-4, 14, 16, 17, 19, 22—24, 26, 27, and 38—40
`
`(“the challenged claims”) of US. Patent No. 8,288,952 B2 (Ex. 1001, “the
`
`’952 patent”), owned by Global Touch Solutions, LLC (“Patent Owner”).
`
`

`

`IPR2015-01175
`
`Patent 8,288,952 B2
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is
`
`entered pursuant to 35 U.S.C. § 318(a) and 37 CPR. § 42.73. For the
`
`reasons discussed below, Petitioner has shown by a preponderance of the
`
`evidence that the challenged claims of the ’952 patent are unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition for inter partes review of the challenged
`claims of the ’952 patent. Paper 3 (“Pet”). Patent Owner did not file a
`
`Preliminary Response. On November 17, 2015, we instituted an inter partes
`
`review of the challenged claims of the ’952 patent. Paper 8 (“Institution
`
`Decision” or “Dec.”). After institution, Patent Owner filed a Patent Owner
`
`Response, Paper 14 (“PO Resp.”), and Petitioner filed a Reply to the Patent
`
`Owner Response, Paper 20 (“Pet Reply”). A consolidated oral hearing for
`
`this case and several others was held on August 3, 2016. A transcript of the
`
`hearing has been entered into the record. Paper 34 (“Tn”).
`
`B. Related Matters
`
`\
`
`The parties identify the following district court proceedings as related
`matters: Global Touch Solutions, LLC v. Microsoft Corp, No. 3:15-cv—
`
`2750-JD (ND. Cal); Global Touch Solutions, LLC v. Toshiba Corp, No.
`
`3:15—cv—2746-JD (ND. Cal); Global Touch Solutions, LLC v. VIZIO Inc.,
`No. 3:15-cv—2747—JD (ND. Cal); Global Touch Solutions, LLC v. Apple
`
`Inc, No. 3:15-cv-2748-JD (N .D. Cal); and Global Touch Solutions, LLC v.
`
`Motorola Mobility, LLC, No. 3:15—cv-2749—JD.(N.D. Cal). Pet. 3; Paper 6,
`2; Paper 7, 1—2. Petitioner also filed petitions for inter partes review of
`
`related US. Patent Nos.’ 7,994,726 (IPR2015—01171), 7,498,749 (IPR2015—
`
`01172), 7,329,970 (IPR2015-01173), and 7,781,980 (IPR2015-01174). Pet.
`
`3; Paper 7, 2—3. Trials were instituted in those proceedings as well. The
`
`2
`
`

`

`IPR2015-01175
`
`Patent 8,288,952 B2
`
`parties also identify as a related matter IPR2015-01151, which is an ongoing
`
`inter partes review of the ’952 patent filed by a different petitioner. Paper 6,
`
`2; Paper 7, 3.
`
`C. The ’952 Patent
`
`The ’952 patent is directed to portable electronic devices that operate
`
`on exhaustible power sources such as batteries. Ex. 1001, Abstract. A
`
`visible indicator such as a light emitting diode (LED) can be used to indicate
`
`the condition of the battery. Id. at 9:46—54, Fig. 11.
`
`D. Claims
`
`Independent claim 1 is illustrative and is reproduced below, with
`
`formatting added:
`
`A method of implementing a user interface of a
`1.
`product, the product comprising a power source, or a connection
`for a power source and at least one energy consuming load, said
`method including the step of
`
`using an electronic module comprising an electronic
`circuit including a microchip and a touch sensor forming part of
`the user interface, said microchip at least partially implementing
`the touch sensor functions and said method including the step of
`
`activating a visible indication in response to an activation
`signal rcccivcd from the user interface, wherein the visible
`indication provides information to a user on at least one item
`from the following group:
`
`a state or condition of the product,
`
`location of the user interface,
`
`a battery power level indication.
`
`

`

`IPR2015-01175
`
`Patent 8,288,952 B2
`
`E. Grounds of Unpatentability Institutedfor Trial
`
`We instituted an inter partes review based on Petitioner’s contentions
`
`that the challenged claims are unpatentable based on the following specific
`
`grounds:
`
`
`
`
`
`
`2
`
`I
`Beard and Rathmann
`Beard, Rathmann, and
`Danielson3
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`
`
`
`
`
`
`1—3 16 17 19 22—24
`3
`a
`a
`9
`26, 27, and 38—40
`
`:
`
`4 and 14
`
`
`
`
`
`Dec. 11.
`
`11. DISCUSSION
`
`A. Claim Construction
`
`We construe explicitly only those claim terms or phrases in
`
`controversy, and we do so only to the extent necessary to resolve the
`
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng ’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999). We construe claim terms in an unexpired patent
`
`according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`
`Consistent with the broadest reasonable construction, claim terms are
`
`presumed to have their ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art in the context of the entire patent
`
`disclosure. In re Translogic Tech, Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). An inventor may provide a meaning for a term that is different from
`
`‘ US. Patent 5,898,290, issued Apr. 27, 1999 (Ex. 1005, “Beard”).
`2 US. Patent 5,955,869, issued Sept. 21, 1999 (Ex. 1006, “Rathmann”).
`3 US. Patent 5,710,728, issued Jan. 20, 1998 (Ex. 1007, “1)anielson”).
`
`4
`
`

`

`IPR2015-01175
`
`Patent 8,288,952 BZ
`
`its ordinary meaning by defining the term in the specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir.‘ 1994). Absent such a clear, deliberate and precise
`definition, it is one of the “cardinal sins” of patent law to import limitations
`from an embodiment in the specification into the claims. Phillips v. AWH
`
`Corp, 415 F.3d 1303, 1320 (Fed. Cir. 2005) (en banc).
`
`In the Petition, Petitioner proposed a construction for “energy
`.
`consuming load.” Pet. 8—9. Patent Owner did not file a Preliminary
`Response. In the Institution Decision, we determined the term “energy -
`consuming load” did not require express construction, and we did not
`
`expressly construe any other claim terms. Dec. 4—5.
`
`Patent Owner proposes a construction for “energy consuming load”
`
`and for various phrases that include the term “function[s].” PO Resp. 16—30.
`
`Patent Owner also proposes a construction for “user interface.” Id. at 15.
`As Petitioner points out, Patent Owner “proposes to construe ‘user
`
`interface,’ but it never applies this construction in its analysis and never
`
`explains why this construction could be relevant to any issue in this
`
`proceeding.” Pet. Reply 20. Accordingly, we determine “user interface”
`
`requires no explicit construction.
`
`

`

`IPR2015-01175
`
`Patent 8,288,952 B2
`
`1. “energy consuming load ” 4
`
`Patent Owner argues that “energy consuming load,” recited in claims
`
`1 and 26, means “an energy consuming component that receives power from
`
`the power source under the control of the microchip.” PO Resp. 20.
`
`Petitioner disagrees, arguing the claims do not recite using the microchip to
`
`control power to the load. Pet. Reply 3 (citing Ex. 1033, 99:17—22). Thus,
`
`Petitioner asserts, Patent Owner attempts to improperly import limitations
`
`from the Specification into the claims. Id. at 4—5. Moreover, Petitioner
`
`argues Patent Owner’s expert confirms that the ordinary meaning of “energy
`
`consuming load" is “any part of the product that consumes energy when the
`
`product is used.” Id. at 4 (citing Ex. 1034, 102: 1—5 (deposition testimony of
`
`Dr. Robert E. Morley in related matter IPR2015—01150)). For the following
`
`reasons, we agree with Petitioner that the broadest reasonable construction
`
`of “energy consuming load” is its ordinary meaning, i.e., any part of the
`
`product that consumes energy when the product is used. Pet. 9.
`
`We begin our analysis with the language of the claims. As Petitioner
`
`points out, the claim does not recite a microchip to control power to the load.
`
`Patent Owner’s expert, Dr. Morley, agrees that nothing in the claim
`
`4 The “energy consuming load” is recited only in the preamble of claims 1
`and 26 and not recited anywhere else in any of the challenged claims. Claim
`1 is reproduced above. Claim 26 recites, in part, an “electronic module for
`use with a product, the product comprising .
`.
`. at least one energy
`consuming load.” The only other reference in the challenged claims to a
`load is in claim 16, which depends from claim 1 via its direct dependency
`from claim 2, and fiirther recites “the method is applied to a product
`comprising the electronic user interface module, the power source and the
`load, with all enclosed or attached to a single product casing.”
`
`6
`
`

`

`1PR2015-01175
`
`Patent 8,288,952 B2
`
`language requires the energy consuming load to receive power under control
`
`of the microchip. Ex. 1033, 99:17—22.
`
`We turn now to the written description of the ’952 patent. We note
`
`the written description refers merely to a “load” and does not refer explicitly
`to an “energy consuming load,” which appears only in the claims. See Ex.
`
`1001, 6:66—7:4. At oral argument, Patent Owner acknowledged that there is
`
`“no explicit lexicography definition” for the terms load and energy
`
`consuming load. Tr. 93:15, 9426—7.
`
`Because the patentee has not acted as his own lexicographer, we must
`
`consider whether the patentee has demonstrated an intent to deviate from the '
`
`ordinary meaning of the claim term “energy consuming load” by including
`
`in the written description expressions of manifest exclusion or restriction,
`
`representing a clear disavowal of claim scope. See Thorner v. Sony Comput.
`
`Entm ’t Am. LLC, 669 F.3d 1362, 1365—66 (Fed. Cir. 2012); Teleflex, Inc. v.
`Ficosa N. Am. Corp, 299 F.3d 1313, 1325 (Fed. Cir. 2002). We have
`
`reviewed the portions of the written description cited in the Patent Owner
`
`Response and do not find any expressions of manifest restriction that limit
`the scope of “energy consuming load” to a load that receives power under
`
`control of the microchip.
`
`Patent Owner argues that a load under the control of the microchip is
`
`the “very character of the invention” that requires us to limit the claims. PO
`
`Resp. l6 (citing Alloc, Inc. v. Int’l Trade Comm ’n, 342 F.3d 1361, 1370
`
`(Fed. Cir. 2003)). Patent Owner further contends “it is this very
`
`configuration that is central to the invention of the ’952 patent, and is
`
`provided in the specification in distinction over the prior art.” Id. (citing Ex.
`
`2002 W 10—15). Patent Owner relies on a statement in the Specification of
`
`

`

`IPR2015—01175
`
`Patent 8,288,952 B2
`
`the ’952 patent stating that the invention provides “a microchip controlled
`switch to manage both the current conducting functions and the MMTI [(man—
`
`machine-interface)] functions in an electronic device, such as a
`
`flashlight .
`
`.
`
`. .” Ex. 1001; 3:61l—64; see PO Resp. 16. As Petitioner points
`
`out, however, this passage describes only what a “microchip controlled
`
`switch” does according to one embodiment; it does not define or otherwise
`Lilimit the scope of “energy consuming load.” See Pet. Reply 5.
`
`Patent Owner also cites portions of the ’952 patent as allegedly
`
`distinguishing devices with microchip-controlled switches from prior art
`
`flashlights with conventional mechanical switches that directly connect a
`power source to a load. PO Resp. 16—18 (citing Ex. 1001, 3:33—38, 528—15,
`7:23—29). But again, these passages describe features of switches; they do
`
`not indicate a clear disavowal of scope of the claim term “energy consuming
`
`load.” See Pet. Reply 6.
`
`We cannot rcdraft the claims for the Patent Owncr to try to cover
`unclaimed features desdribed in the Specification, even if the feature was
`
`found in every embodiment. See Ventana Med. Sys., Inc. v. BioGenex Labs.,
`
`' Inc, 473 F.3d 1173, 1181 (Fed. Cir. 2006) (refusing to read limitation found
`
`in all embodiments in the specification into the claims because “[w]hen the
`
`claim addresses only some of the features disclosed in the specification, it is
`
`improper to limit the claim to other, unclaimed features”); see also E—Pass
`
`Techs, Inc. v. 3COM Corp, 343 F.3d 1364, 1370 (Fed. Cir. 2003) (refusing
`
`' to read feature of every embodiment from specification into the claims
`because “[a]n invention may possess a number of advantages or purposes,
`
`and there is no requirement that every claim directed to that invention be
`
`limited to encompass all of them”). In the ’952 patent, the patentee
`
`

`

`IPR2015-01175
`
`, Patent 8,288,952 B2
`
`expressly claimed a microchip that “at least partially implement[s] the touch
`
`sensor functions,” but chose not to claim an energy consuming load that
`
`receives power from a power source under control of the microchip.
`Patent Owner does not allege that any prosecution history is helpful to
`ascertain the meaning of the “energy consuming load.” See Tr. 72:9—14.
`
`Petitioner points out that claims of Patent Owner’s related patents contradict
`
`Patent Owner’s proposed construction. Pet. Reply 8—10. When the patentee
`
`wanted to include a requirement that the microchip control the flow of
`power, it did so expressly and without leaving it implied in the term “energy
`
`consuming load.” For example, claim 52 of related US. Patent No.
`
`7,329,970 recites “using the microchip to control the connection of the
`power source to the load.” Ex. 1035, 16:31—42.
`We have considered the parties’ arguments and supporting evidence
`
`regarding the construction of the recited “energy consuming load.” For the
`
`reasons discussed, we agree with Petitioner that the scope of “energy
`
`consuming load” is not limited to a load that is under the control of the
`
`microchip, as asserted by Patent Owner.
`
`2.
`
`‘fzmction "
`
`Claims 1 and 26 recite, in part, a “microchip at least partially
`
`implementing the touch sensor[/sensing] functions.” Claim 1 recites
`
`activating “a visible indication in response to an activation signal received
`from the user interface,” and claim 26 recites the microchip is “configured to
`
`activate a visible indication in response to an activation signal received from
`
`the user interface.” Ex. 1001, 12:32—36, 14:2—5. Claim 2, which depends
`from claim 1, further recites the “method includes the selection and
`
`activation of a function or mode of the product in response to a further
`
`

`

`IPR2015-01175
`Patent 8,288,952 B2
`
`,
`
`activation signal(s) received from the user interface. ” Id at 12. 42—45
`
`(emphasis added). Claim 3, which depends from claim 2, and claim 24,
`
`which depends from claimll, each further recite “aut/omatically deactivating
`.
`\
`a function that was activated in response to an activation signal received
`
`‘r
`
`from said user interface.” Id. at 12:47—49, 13:56—58 (emphasis added).
`
`Claim 22, which depends from claim 1, further recites “activating or
`
`deactivating productfunctions in response to signals received from the user
`
`interface.” Id. at 13:49—50 (emphasis added). The parties dispute whether
`
`“a function,” as recited in claims 2, 3, and 24, or the “product functions,” as
`recited in claim 22, encompass activating the visible indicator or whether “a
`
`I function” and “product functions” must be some function(s) other than
`
`activation of the indicator.
`
`PatentOwner first argues for a specific construction of “touch sensor
`functions” and “touch sensing functions,” as recited in independent claims 1
`
`and’26, respectively. PO Resp. 20—24. Petitioner states “Global Touch does
`
`' not explain how or why this construction is relevant to this proceeding,”
`such that “no spccific construction is necessary.” Pet. Reply 19.
`
`Specifically, Petitioner’s challenges do not depend on a construction of the
`recited touch sensor/sensing functions broader than Patent Owner’s
`proposed construction. Accordingly, there is no dispute between the parties
`in this proceeding regarding the proper construction of touch sensor/sensing
`“functions, and we do not construe explicitly those terms.
`,
`I
`I Patent Owner also argues that “a function or mode _of the product,” as
`
`recited in dependent claim 2, should be_construed as “function or mode of
`
`the product other than the visible indication.” PO ReSp. 26. In support,
`
`Patent Owner argues the Specification of the ’952 patent describes the
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`10
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`IPR2015-01175
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`Patent 8,288,952 B2
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`visible indicator functionality “as a distinct and additional feature of the
`
`device in addition to control of other modes or functions,” and that “modes
`
`or functions other than the visible indicator are separately controlled by the
`
`user interface.” Id. at 25—26 (quoting Ex. 1001, 9:46—52, 10:26—35). With
`
`respect to claims 3, 22, and 24, Patent Owner again argues that the
`
`“function,” recited in claims 3 and 24, and the “product functions,” recited in
`
`claim 22, must be distinct from activating the Visible indication, recited in
`
`claim 1, to avoid rendering claim language superfluous and because of the
`
`use of different terms (i.e., “function” versus “visible indication”). PO Resp.
`
`27—28 (asserting “function” excludes activating or deactivating the “visible
`
`indication”), 29—30 (asserting “plural functions” should be construed to be
`
`different from activation or deactivation of the “visible indication” for
`
`similar reasons as argued with respect to the term “function,” recited in
`
`claims 3 and 24). Patent Owner also argues the activation signal recited in
`
`claims 3 and 24 is different than the activation signal recited in claim 1
`
`because the recitation of “an activation signal” in claims 3 and 24 has no
`
`antecedent basis in any prior claim recitation. Id. at 28.
`
`Petitioner agrees that activating a “function” and activating a “visible
`
`indication” have different meanings. Petitioner argues, and we agree, that
`
`“function” is a broad term that encompasses any type of function, while
`
`“activating a visible indication” is a specific type of function. Pet. Reply 17.
`
`Petitioner cites testimony of Patent Owner’s expert in support. Id. at 18
`
`(citing Ex. 1033, 118:21—11923; Ex. 1040 1] 50). Moreover, the
`
`Specification refers to “battery strength monitoring” as one example of a
`
`function. Id. at 18 (citing Ex. 1001, 1:57—59, 8:58—63).
`
`11
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`

`

`I
`
`IPR2015-01175
`
`Patent 8,288,952 B2
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`We agree with Petitioner that Patent Owner’s attempt to narrow the
`term “function” to exclude activation of a visible indicator is contrary'to the
`
`claims, the written description of the ’952 patent, and the testimony of
`
`Patent Owner’s own expert. Accordingly, we agree with Petitioner that the
`
`broadest reasonable interpretation of “function” is not limited to a function
`
`other than activating the viSible indicator, as asserted by Patent Owner.
`
`B. Obviousness of Claims 1-3, 16, 17, 19, 22—24, 26, 27, and 38—40
`over the Combination ofBeard and Rathmann
`'
`
`Petitioner contends that claims 1—3, l6, l7, 19, 22—24, 26, 27, and 38—
`
`40 are unpatentable under 35 U.S.C. § 103(a) as obvious over Beard and
`
`- Rathmann. Pet. 30—55. Relying on the declaration testimony of Mr. Paul
`
`Beard, Petitioner explains how Beard and Rathmann allegedly teach all the
`
`claim limitations, and asserts an ordinarily skilled artisan would have
`
`combined the asserted teachings. Id. (citing Ex. 1003).
`
`I. Beard
`Beard describes an intelligent battery pack withia microcontroller and
`battery indicators for use with a portable electronic device. Ex. 1005, 1:18—
`21; see Ex. 1003 1| 68. The microcontroller responds to a touch-sensing
`
`circuit that detects changes in impedance or capacitance when an operator
`
`touches one or two contacts. Ex. 1005, 11:12—16; see Ex. 1003 11 68. Figure
`
`l 1 of Beard is reproduced on the following page.
`
`12
`
`

`

`IPR2015-01175
`
`Patent 8,288,952 B2
`
`Monitoring
`Circuit
`
`Power
`
`Regulation /
`SUPP'V
`
`Circuit
`
`Removal
`
`Sensing
`Circuitry
`
`Control
`
`Infrared
`
`Transceiver
`
`Interface
`
`Circuitry
`
`FIG. 11
`
`203
`
`Figure 11 depicts battery pack 201 that provides an operator with an
`indication of battery capacity whether or not it is inserted into portable
`
`electronic device 203. Ex. 1005, 11:10—13. When fully inserted, battery
`
`pack contacts 241, 243 and 245 engage corresponding contacts 251, 253 and
`
`255, and, if sufficient power is available, device 203 may enter a fully
`
`operational state when the operator desires. 1d. at 11:67—12:4.
`
`2. Rathmann
`
`Rathmann describes a “smart battery for use in an intelligent device
`having power management capabilities.” Ex. 1006, 1:12—16; 1:65—3:30.
`
`gRathmann’s indicator uses LEDs. In response to a signal from the battery
`pack’s user interface, four LEDs illuminate sequentially to indicate
`
`remaining battery charge. Ex. 1006, Fig. 3, 16:24—36; see Ex. 1003 1| 87.
`5
`
`13
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`

`

`IPR2015-01175
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`Patent 8,288,952 B2
`
`Petitioner asserts the combination of Beard and Rathmann teaches all
`
`3. Claim 1
`
`of the limitations of independent claim 1.
`
`The Preamble
`
`First, Petitioner contends Beard discloses a “method for implementing
`
`a user interface of a product” for various reasons, including because Beard
`
`teaches providing “a visible indication of the state of the product’s battery”
`
`in response to a user touching contacts. Pet. 27—28 (citing Ex. 1005,
`
`Abstract; Ex. 1003 1] 122). Patent Owner does not dispute Beard discloses
`
`this limitation.
`
`Additionally, Petitioner contends Beard discloses battery pack 201 of
`
`Figure 11 and electrical connections that connect the battery pack to the
`
`energy consuming part of device 203, which teaches “the product
`
`comprising a power source, or a connection for a power source and at least
`
`one energy consuming load,” as recited in claim 1. Pet. 28. Petitioner
`
`contends Beard discloses the product comprises “at least one energy
`
`consuming load” because Beard discloses that the battery pack delivers
`
`electric charge energy to portable electronic device 203, which includes a
`
`load, such as any of the exemplary energy consuming components depicted
`
`in device 203 in Figure 11. Pet. 29 (citing Ex. 1005, 11:57—61). We agree
`
`with and adopt Petitioner’s contentions regarding Beard’s teachings of this
`
`limitation. Id. Patent Owner argues Beard does not teach at least one
`
`“energy consuming load” because the energy consuming components that
`
`Petitioner points to do not “receive power from the power supply under the
`
`control of the control circuitry 223 (alleged to correspond to the claimed
`
`microchip) or user interface of the battery pack 201.” PO ReSp. 32. Patent
`
`14
`
`

`

`IPR2015-01175
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`Patent 8,288,952 B2
`
`.
`
`‘
`
`Owner’s argument, however, depends on its proposed construction of
`
`“energy consuming load” as limited to a load under the control of a
`microchip, see id. at 30—45, a construction which we have not adopted.
`Patent Owner’s expert, Dr. Morley, admits that if we do not adopt Patent
`Owner’s limiting construction, Beard discloses an “energy consuming load”
`
`as recited in claim 1. Ex. 1033, 170:2—7. Thus, we find Patent Owner’s
`
`argument to be unpersuasive.
`
`The First Method Step
`(The “using an electronic module ” Step)
`
`Petitioner further contends Beard discloses “said method including the
`
`step of using an electronic module comprising an electronic circuit including
`
`a microchip and a touch sensor forming part of the user interface, said
`
`microchip at least partially implementing the touch sensor functions”
`
`because Beard discloses “using battery pack 201 of Figure 11 which is an
`
`electronic module comprising electronic circuitry” when a user touches the
`
`contacts. Pet. 30 (citing Ex. 1005, 4:20—24, Fig. 11; Ex. 1003 {I 128), 32.
`
`Petitioner further explains that Beard’s battery pack “includes a microchip
`
`and a touch sensor.” Id. (citing Ex. 1003 11 129). Petitioner argues Beard
`
`discloses the microchip implementing touch sensor functions because
`
`Beard’s microchip controls “the display of charge status information upon
`
`detecting user input, a request, through the touch sensor.” Id. at 31 (citing
`
`Beard 11:14—22, 11:31—33 Ex. 1003 11132).
`
`The only aspect of this limitation Patent Owner disputes is Whether
`
`Beard discloses a microchip that implements multiple touch sensor
`
`functions. PO Resp. 21—24. Petitioner contends Beard discloses its
`
`microchip activating multiple functions in response to input from the touch
`
`sensor. Pet. Reply 14. Specifically, Petitioner asserts Beard discloses
`
`15
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`_ IPR2015-01175
`Patent 8,288,952 B2
`
`calculating and displaying battery capacity, calculating and displaying a
`
`remaining time estimate, and using a timer to determine when to deactivate a
`
`display. 1d. at 14—15 (citing Ex. 1005, 11:31—40, 11:41—48, 10:51—54).
`Petitioner also points to testimony from Patent Owner’s expert stating that
`
`determining battery capacity and remaining time are two different functions.
`
`Id. at 15 (citing Ex. 1033, 124:6—9, 126:2—14).
`
`After reviewing the submitted arguments and evidence, we agree with
`
`Petitioner. We note Patent Owner’s expert further testified that calculating
`
`battery capacity is a part of calculating a remaining time estimate. Ex. 1033,
`
`127:1—128220. Nevertheless, even accepting that calculating battery
`
`capacity may be a part of, or required for, calculating a remaining time
`
`estimate, the evidence supports Petitioner’s position that calculating and
`
`displaying a remaining time estimate is a distinct function from calculating
`and displaying the battery capacity.
`a
`
`The Second Method Step
`(The “activating a visible indication ” Step)
`
`Petitioner asserts the combination of Beard and Rathmann teaches or
`
`suggests the recited step of “activating a visible indication in response to an
`activation signal received from the user interface, wherein the visible
`
`indication provides information to a user on at least one” of a “condition of
`
`the product, location of the user interface, [or] a battery power level
`
`indication.” Ex. 1001, 12:34—41. Specifically, Petitioner contends Beard
`
`discloses microchip 223 activating visual diSplay 225 to provide battery
`
`power information in response to a user touching contacts 211

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