,us to. ov
`Trials
`571-272-7822
`
`Paper 27
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.,
`
`Petitioner,
`
`V.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`Case IPR2015-01151
`
`Patent 8,288,952 B2
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 318(a) and 37 CFR. § 42. 73
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Microsoft Corporation and Microsoft Mobile, Inc. (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
`
`
`Trials
`571-272-7822
`
`Paper 27
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.,
`
`Petitioner,
`
`V.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`Case IPR2015-01151
`
`Patent 8,288,952 B2
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 318(a) and 37 CFR. § 42. 73
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Microsoft Corporation and Microsoft Mobile, Inc. (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
`
`
`
`IPR2015-01151
`
`Patent 8,288,952 B2
`
`B2 (Ex. 1001, “the ’952 patent”), owned by Global Touch Solutions, LLC
`
`(“Patent Owner”). 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 2 (“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 16 (“Pet Reply”). A consolidated oral hearing for
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`this case and several others was held on August 4, 2016. A transcript of the
`
`hearing has been entered into the record. Paper 26 (“TL”).
`
`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 (N.D. Cal.); Global Touch Solutions, LLC v. Toshiba Corp. , No.
`
`3:15-cv-2746-ID (N.D. Cal.); Global Touch Solutions, LLC v. VTZIO 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 (ND. Cal.). Pet. 3—4;
`
`Paper 4, 2; Paper 7, 3. Petitioner also filed petitions for inter partes review
`
`of related US. Patent Nos. 8,035,623 B2 (IPR2015-01023), 7,772,781 B2
`
`2
`
`
`
`IPR2015-01151
`
`Patent 8,288,952 B2
`
`(IPR2015-01024), 7,265,494 B2 (IPR2015-01025), 7,994,726 B2 (IPR2015-
`
`01147), 7,498,749 B2 (IPR2015-01148), 7,329,970 B2 (IPR2015-01149),
`
`and 7,781,980 B2 (IPR2015-01150). Pet. 4. Institution of a trial was denied
`
`for IPR2015-01024 and IPR2015-01025. A final written decision was
`
`issued in IPR2015-01023. Trials were instituted in IPR2015-01147,
`
`IPR2015-01148, IPR2015-01149, and IPR2015-01 150, each ofwhich is an
`
`ongoing inter partes review. The parties also identify as a related matter
`
`IPR2015-01175, which is an ongoing inter partes review of the ’952 patent
`
`filed by a different petitioner. Id; Paper 4, 2.
`
`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 received from the user interface, wherein the visible
`indication provides information to a user on at least one item
`from the following group:
`
`
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`IPR2015-01151
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`Patent 8,288,952 B2
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`a state or condition of the product,
`
`location of the user interface,
`
`a battery power level indication.
`
`E. Ground of Unpatentability Institutedfor Trial
`
`We instituted an inter partes review based on Petitioner’s contention
`
`that the challenged claims are unpatentable as obvious under 35 U.S.C.
`
`§ 103(a) in View of Jahagirdarl and Schultz.2 Dec. 9.
`
`II. 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 CPR. § 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
`
`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
`
`1 US. Patent 6,125,286, issued Sept. 26, 2000 (Ex. 1004, “Jahagirdar”).
`2 US. Patent 4,053,789, issued Oct. 11, 1977 (Ex. 1005, “Schultz”).
`
`4
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`
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`IPR2015-01151
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`Patent 8,288,952 B2
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`definition, it is one of the “cardinal sins” of patent law to import limitations
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`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 “touch sensor
`
`functions” and “touch sensing functions.” Pet. 11—13. Patent Owner did not
`
`file a Preliminary Response. In the Institution Decision, we did not
`
`expressly construe any claim terms. Dec. 4. The proper construction of
`
`these terms is not in dispute and no explicit construction is necessary to
`
`resolve any matter in this proceeding.
`
`Patent Owner proposes a construction for "activating"/”activate” and
`
`“deactivating.” PO Resp. 10—1 1. To the extent it is necessary to construe
`
`these terms, we do so below in the context of analyzing whether the prior art
`
`renders the claims unpatentable.
`
`B. Obviousrzess 0f the Challenged Claims over the
`
`Combination ofJahagirdar and Schultz
`
`Petitioner contends the challenged claims are unpatentable under
`
`. 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. Pet. 14—60.
`
`Relying on the declaration testimony of Mark N. Horenstein, Ph.D.,
`
`Petitioner explains how Jahagirdar and Schultz allegedly teach all the claim
`
`limitations, and asserts an ordinarily skilled artisan would have combined
`
`the asserted teachings. Id. (citing Ex. 1014).
`
`We have reviewed the Petition, Patent Owner Response, and
`
`Petitioner’s Reply, as well as the relevant evidence discussed therein. For
`
`the reasons that follow, we determine Petitioner has shown, by a
`
`preponderance of the evidence, that the challenged claims would have been
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`IPR2015-01151
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`Patent 8,288,952 B2
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`obvious in View of the asserted combined teachings of Jahagirdar and
`
`Schultz.
`
`1. Jahagirdar
`
`Jahagirdar describes a mobile phone that has a microchip-controlled
`
`user interface and mechanical push—button switches. Ex. 1004, 3:59—67;
`
`Ex. 1014 11 33. Figures 1 and 2 of Jahagirdar (with Petitioner’s annotations)
`
`are reproduced below:
`
`FIGJ
`FIC.2
`
`
`Display Area
`(Provided with visual information
`Display Area
`from Display Element 516)
`(Provided with visual
`
`informationfrom Display
`Element 520)
`
`~
`
`’0_0
`
`
`
`Pet. 25. Figures 1 and 2 are illustrations of a mobile station having a first
`
`display area and a second display area. Ex. 1004, 1:3 8—40, 3:33, 4:28—29.
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`
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`IPR2015-01151
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`Patent 8,288,952 B2
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`Figure 5 of Jahagirdar (with Petitioner’s annotations) is reproduced
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`below:
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`Controller
`
` Kev/circuit
`
`1 ElectricaICircuitry
`1-1.-5
`
`Pet. 26. Figure 5 is a schematic block diagram of electrical circuitry 500 of
`
`mobile station 102. Ex. 1004, 1:46—47.
`
`2. Schultz
`
`Schultz describes “a reliable touch actuated system .
`
`.
`
`. responsive to
`
`the touch of an animal .
`
`.
`
`. [such as] human beings, pets and domestic
`
`animals.” Ex. 1005, 1:27—31. Schultz discloses touch responsive area 67.
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`Id. at 4:47—48; Ex. 1014 1140.
`
`3. Claim 1
`
`Petitioner asserts the combination of Jahagirdar and Schultz teaches
`
`all of the limitations of independent claim 1. Pet. 24—36; Pet. Reply 1—15.
`
`We agree with and adopt Petitioner’s contentions regarding claim 1, as set
`
`forth in detail in the Petition and as summarized below. See Pet. 24—36; Pet.
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`Reply 1—15.
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`
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`IPR2015-01151
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`Patent 8,288,952 B2
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`The Preamble
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`First, Petitioner contends Jahagirdar discloses a “method for
`
`implementing a user interface of a product, 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. 24—26. Specifically, Petitioner
`
`asserts Jahagirdar discloses a user interface including plurality of keys 144
`
`that are part of a product, namely mobile station 102. Id. at 25 (citing Ex.
`
`1004, 3:29-31, Figs. 1, 2; Ex. 1014 11 52). Petitioner further argues mobile
`
`station 102 includes battery 128 as its power source and display element
`
`520, which Petitioner maps to the energy consuming load. Id. at 25-26
`
`(citing Ex. 1004, 3:33—35, 3:59—62, 4:27—30, 4:40—41;Ex. 1014 W 53, 54).
`
`Patent Owncr does not dispute that Jahagirdar discloses the preamble of
`
`claim 1. Upon reviewing the parties’ arguments, we agree with and adopt
`
`Petitioner’s contentions that Jahagirdar teaches or suggests the recited
`
`preamble of claim 1. We also agree with and adopt the reasoning set forth in
`
`the Petition and Dr. Horenstein’s declaration for why a person of ordinary
`
`skill in the art would have modified Jahagirdar with the cited teachings of
`
`Schultz. See id. at 30—31 (citing EX. 1014 llll 63—65; KSR Int ’1 Co. v.
`
`Teleflex Inc, 550 US. 398, 417 (2007)).
`
`The First Method Step (i.e.,
`module ” Step)
`
`the “using an electronic
`
`Petitioner further contends the combined teachings of Jahagirdar and
`
`Schultz teach or suggest “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.” Pet. 26—34.
`
`Specifically, Petitioner argues Jahagirdar discloses that mobile station 102
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`8
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`IPR2015-01151
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`Patent 8,288,952 B2
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`has electronic circuitry 500, including “key circuit 513 in connection with
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`controller 504 and plurality of keys 144” and a microchip, which Petitioner
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`maps to the recited “electronic module comprising an electronic circuit
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`including a microchip.” Id. at 27 (citing EX. 1004, 3:59—64, Ex. 1014 1[ 57).
`
`Petitioner also argues “Jahagirdar’s ‘key circuit 513 provides signals to
`
`controller [504] in response to actuations of the plurality of keys 144.’” Id.
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`(quoting Ex. 1004, 4: 19—20). Petitioner asserts the only aspect of the using
`
`an electronic module step that Jahagirdar fails to disclose is “that any of keys
`
`144 included touch sensors that formed part of the user interface,” but that
`
`“touch sensors were well known in the art by the priority date of the ’952
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`patent.” Id. at 28 (citing Ex. 1014 fl 60).
`
`Petitioner argues a person having ordinary skill in the art would have
`
`incorporated touch sensors into keys 144 in a way that controller 504 “at
`
`least partially implement[ed] the touch sensor functions,” as recited in claim
`
`1. Id. Petitioner asserts the combination of Schultz’s touch sensor with
`
`Jahagirdar’s mobile phone is merely the combination of known elements
`
`performing known functions and yielding predictable results. Id. at 33—34
`
`(citing Ex. 1014 11 71). Petitioner points to various references and to Dr.
`
`Horenstein’s testimony regarding an ordinarily skilled artisan’s knowledge
`
`and understanding of the prior art and ability to combine the respective
`
`teachings from that prior art. Id. at 30—34.
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`Specifically, Petitioner argues “[i]ncorporating a touch sensor into
`
`Jahagirdar would have asked little of a person of ordinary skill, because a
`
`touch sensor would have improved Jahagirdar in the same way a touch
`
`sensor would have improved any such electronic device.” Pet. 34 (citing Ex.
`
`1014 fil 64). Petitioner further asserts claim 1 of the ’952 patent “does not
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`
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`IPR2015-01151
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`Patent 8,288,952 B2
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`specify details of the claimed touch sensor” and “Schultz’s touch sensor
`
`could have been integrated into Jahagirdar’s keys 144 in multiple ways
`
`depending upon what might have been convenient or desirable.” Id. (citing
`
`Ex. 1014 1] 71). In particular, Petitioner contends Jahagirdar’s keys 144
`
`could have been replaced by one or more touch sensors, such that the touch
`
`sensors would perform the functions that Jahagirdar’s keys 144 perform. Id.
`
`(citing Ex. 1014 11 71 (testifying that, if a person having ordinary skill in the
`
`art were to integrate Schultz’s touch sensors into Jahagirdar’s keys 144, it
`
`would have been within that person’s technical grasp and knowledge of
`
`options to relocate keys 144 or program Jahagirdar’s controller to recognize
`
`input to keys 144 when mobile station 102 was in either an open or closed
`
`position)). Accordingly, Petitioner argues combining Schultz’s touch sensor
`
`with Jahagirdar’s mobile phone would have been obvious because
`
`“Jahagirdar and Schultz demonstrate that the elements of claim 1 were well
`
`known, and the combination of the techniques described therein yields no
`
`more than one would expect from such an arrangement.” Id. at 33—34
`
`(citing Ex. 1014 11 71).
`
`Patent Owner’s expert, Dr. Morley, agrees with Petitioner’s
`
`underlying assertions as to why the challenged claims would have been
`
`obvious: the flip-phone of Jahagirdar and touch sensor of Schultz are prior
`
`art; there was no technical barrier to combining the prior art elements; and
`
`the result of combining the prior art elements was predictable. Ex. 1017,
`
`17622—177: 13; Ex. 2002 1[ 32 (correctly stating that combining “prior art
`
`elements according to known methods to yield predictable results” is one
`
`exemplary rationale for obviousness). As Dr. Morley explains, the Schultz
`
`touch sensors were not limited by size or arrangement, and a person of
`
`10
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`ordinary skill could have taken the Schultz sensors and put them into touch
`
`sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17—21, 140:2—
`
`13. Additionally, as Dr. Morley acknowledges, the claims of the ’952 patent
`
`contain no limitations as to the physical form, internal architecture, or
`
`arrangement of the touch sensors. Id. at 172:12—173: 10. Patent Owner
`
`presents no argument that the proposed combination would have been
`
`beyond the capabilities or knowledge of a person having ordinary skill in the
`
`art. See PO Resp. 12—19.
`
`As the Supreme Court has stated, “when a patent simply arranges old
`
`elements with each performing the same function it had been known to
`
`perform and yields no more than one would expect from such an
`
`arrangement, the combination is obvious.” KSR, 550 US. at 417 (internal
`
`quotation marks omitted). “If a person of ordinary skill can implement a
`
`predictable variation, § 103 likely bars its patentability.” Id. As illustrated
`
`by Schultz, the use of a touch sensor as an alternative to a mechanical push
`
`button was well known in the prior art. See Ex. 1004; Ex. 1014 Till 39—42.
`
`We agree that the combination of Jahagirdar and Schultz teaches the
`
`elements of claim 1 as arranged, and we are persuaded the proposed
`
`combination would have been obvious, because it merely involves
`
`substitution of familiar elements, the combination of which yields
`
`predictable results. See KSR, 550 US. at 417. In particular, we agree that
`
`the proposed combination is the simple substitution or modification of
`
`Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other
`
`words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream
`
`Corp, 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of
`
`when the asserted claims involve a combination of familiar elements
`
`11
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`[PR2015-01151
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`Patent 8,288,952 B2
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`according to known methods that does no more than yield predictable
`
`results”). Patent Owner does not point us to objective evidence of
`
`nonobviousness to overcome the textbook case of obviousness here.
`
`Furthermore, Petitioner offers additional reasons an ordinarily skilled
`
`artisan would have modified or replaced Jahagirdar’s keys with Schultz’s
`
`touch sensor. In particular, Petitioner contends Schultz explicitly identified
`
`certain advantages of its touch sensor, including minimizing accidental
`
`actuation and eliminating contamination and mechanical failures associated
`
`with switches having moving parts. Pet. 30 (citing Ex. 1014 1] 63); Ex.
`
`1005, 1:9—24. Petitioner further contends an ordinarily skilled artisan would
`
`have incorporated Schultz’s touch sensor switches into Jahagirdar’s mobile
`
`phone “to enhance convenience and aesthetics for the user.” Pet. 30 (citing
`
`Ex.1014 11 63).
`
`Patent Owner argues that none of Petitioner’s additional reasons for
`
`the combination are rational. PO Resp. 13-19. Specifically, Patent Owner
`
`argues that replacing Jahagirdar’s keys 144 with Schultz’s touch sensor
`
`would actually increase accidental actuations because a user would contact
`
`the touch sensors while carrying or-using the phone due to the location of
`
`touch sensors on the side of the phone. Id. at 13—16. Patent Owner also
`
`contends there is no evidence that Jahagirdar’s keys 144 are subject to
`
`contamination or mechanical failure and, to the extent they are, a person of
`
`ordinary skill in the art would have replaced keys 144 with switches other
`
`than touch sensors, such as membrane switches. Id. at 16—17 (citing Ex.
`
`2002 1111 57, 58, 60—64; Ex. 1001 , 8:13—24). Finally, Patent Owner argues
`
`the record does not provide an evidentiary basis to conclude that
`
`Jahagirdar’s mobile device would be improved aesthetically by
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`12
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`incorporating Schultz’s touch sensor and that incorporating the touch sensor
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`would decrease convenience due to increased accidental actuation. Id. at 18.
`
`Notwithstanding Patent Owner’s position that Petitioner’s proposed
`
`combination would increase accidental actuations when grabbing or holding
`
`Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that
`
`touch sensors would alleviate accidental actuation by inanimate objects
`
`(e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2
`
`(citing Ex. 1017, 157:20—158z23; Ex. 2002 1] 60). Accordingly, Petitioner
`
`argues a person having ordinary skill in the art looking to reduce inadvertent
`
`actuation by inanimate objects would be motivated to incorporate Schultz’s
`
`touch sensor. Id. (citing Ex. 1022 11 3). Moreover, Petitioner’s unrebutted
`
`evidence in the record demonstrates Schultz’s touch sensor could have been
`
`integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what
`
`might have been convenient or desirable. Id. at 9 (citing Ex. 1014 1[ 71); Ex.
`
`1022 1| 4. For example, a person of ordinary skill would have been readily
`
`able to relocate those touch sensors to different locations, or “one of skill
`
`could have easily programmed Jahagirdar’s controller such that touch sensor
`
`inputs were only recognized at appropriate times for example, depending on
`
`whether the mobile station 102 was opened or closed.” Ex. 1014 1] 71. In
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`such a way, inadvertent actuation of the touch sensors would be minimized
`
`or eliminated.
`
`Even assuming that other switches, such as membrane switches,
`
`would have been available or preferable for reducing contamination and
`
`mechanical failures, Petitioner argues that would not render the proposed
`
`combination nonobvious. Pet. Reply at 3—4. Finally, regarding the
`
`argument that a person having ordinary skill would look to add Schultz’s
`
`13
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`IPR2015—01 151
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`Patent 8,288,952 B2
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`touch sensor to Jahagirdar’s keys 144 due to aesthetic concerns, Petitioner
`
`asserts Dr. Morley admitted aesthetics might be a reason to design a product
`
`with touch sensors and has offered no reasons why some phone designers or
`
`users would ignore aesthetics. Id. at 4 (citing Ex. 1017, 171 24—1723).
`
`Petitioner also points to examples of products that integrated touch sensors
`
`into user interfaces. Pet. 32—33 (citing Exs. 1006, 1008, 1009); Pet. Reply 4.
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`We have reviewed the parties’ arguments and evidence and find that
`
`the preponderance of the evidence in the record supports a conclusion that it
`
`would have been obvious to combine the asserted teachings. Patent Owner’s
`
`primary argument against Petitioner’s additional reasons for its proposed
`
`combination is that touch sensors on Jahagirdar’s mobile phone would
`
`increase inadvertent actuations when grabbing or holding the modified
`
`mobile phone. See PO Resp. 14—16, 17 (“inadvertent actuation .
`
`.
`
`. would
`
`nonetheless deter or teach away”), 18 (“replacing the push-button keys .
`
`.
`
`.
`
`with touch sensors would have plainly led to an increase in inadvertent
`
`actuation, and therefore a decrease in convenience”). However, we find an
`
`ordinarily skilled artisan would have been capable of assessing any benefits
`
`and harms of integrating a touch sensor into Jahagirdar’s mobile phone and,
`
`using ordinary creativity, deciding whether to modify the arrangement of
`
`keys 144 or program the phone to recognize touch sensor inputs only in
`
`certain circumstances in order to minimize or eliminate inadvertent
`
`actuation. See KSR, 550 US. at 417 (“If a person of ordinary skill can
`
`implement a predictable variation, § 103 likely bars its patentability”); id. at
`
`421 (“A person of ordinary skill is also a person of ordinary creativity, not
`
`an automaton”); Ex. 1014 11 71. Moreover, we agree with Petitioner that
`
`one of ordinary skill in the art would have been motivated to pursue the
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`desirable properties of touch sensors, as taught by Schultz, even at the
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`potential expense of forgoing a benefit of the push buttons taught by
`
`Jahagirdar. See In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016).
`
`The Second Method Step (i.e.,
`indication ” Step)
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`the “activating a visible
`
`Petitioner asserts Jahagirdar teaches the recited step of “activating a
`
`visible indication in response to an activation signal received from the user
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`interface, wherein the visible indication provides information to a user on at
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`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 Jahagirdar discloses “activating a Visible indication”
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`(display element 516 displaying information as described by step 816 of
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`Figure 8A) “in response to an activation signal received from the user
`
`interface” (signal received when pressing key 150, which is one of keys 144
`
`that are part of Jahagirdar’s user interface). Pet. 35 (citing Ex. 1004, 5:54-
`
`64; Ex. 1014 ill 73, 74). Petitioner further argues Jahagirdar discloses
`
`“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” because Jahagirdar
`
`discloses displaying “battery status information such as a battery level
`
`indication and/or a low battery warning indication” on display 516. Id. at
`
`35—36 (citing Ex. 1004, 5:59—61; Ex. 1014 11 75).
`
`Patent Owner argues Jahagirdar’s first display element 516 (alleged to
`
`display the visible indication) “is not activated (turned on) in response to an
`
`activation signal received from the user interface.” PO Resp. 20.
`
`Specifically, Patent Owner argues “first display element 516 is turned on by
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`Patent 8,288,952 B2
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`flipping the phone closed, which is not an operation of the keys 144 alleged
`
`to correspond to the claimed user interface.” Id
`
`Petitioner replies that Jahagirdar describes “a configuration in which
`
`display element 516 was not activated prior to actuation of key 150.” Pet.
`
`Reply 12 (emphasis omitted). In particular, Petitioner argues that, when
`
`Jahagirdar’s phone is flipped closed, display area 130 displays status
`
`information, but “the status information may include little or no information,
`
`where display area 130 is cleared.” Id. at 12—13 (quoting Ex. 1004, 5 :43—
`
`44) (emphases omitted). In the case where display area 130 is cleared,
`
`Petitioner asserts that pressing key 150 to display new visual information
`
`results in display element 516 changing from displaying nothing to
`
`displaying information, and thus is activated (or turned on) in the process.
`
`Id. at 13 (citing Ex. 1004, 5:43—57; Ex. 1022 1] 5).
`
`We agree with Petitioner. Claim 1 recites, in part, “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
`
`.
`
`.
`
`. a battery power level indication.” Jahagirdar discloses providing
`
`information regarding battery power level in response to a user actuating key
`
`150. Ex. 1004, 5:54—64 (new visual information, which may include battery
`
`level indication, is displayed after a user presses key 150); see Pet. 35
`
`(Petitioner mapping the recited “activating a visible indication in response to
`
`an activation signal received from the user interface” to Jahagirdar’s
`
`disclosure of sending data to display element 516 in response to actuation of
`
`key 150. Accordingly, any reasonable interpretation of “activating” the
`
`visible indication is met by Jahagirdar’s displaying of new visual
`
`information in response to actuation of key 150 because the visible indicator
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`is not activated (i.e., not providing the recited information) until both display
`516 has power and key 150 was actuated, which causes display 516 to
`
`display new visual information. See Pet. Reply 14; Tr. 11417—8 (Patent
`
`Owner’s counsel responding that “activation would require both power to
`
`the display and display of information”).
`
`Thus, we agree with Petitioner that Jahagirdar teaches “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,” as recited .in claim 1. Petitioner has shown
`sufficiently that the combination of Jahagirdar and Schultz teaches all the
`
`limitations of claim 1. For the foregoing reasons, we conclude Petitioner has
`
`shown, by a preponderance of the evidence, that claim 1 would have been
`
`obvious in View of Jahagirdar and Schultz.
`
`4. Claim 26
`
`The structural limitations recited in independent claim 263 each appear
`
`in method claim 1, and Petitioner has mapped various aspects of Jahagirdar
`
`and Schultz to those elements. Pet. 45—55. Patent Owner relies on the same
`
`arguments for claim 26 as it asserted regarding claim 1. PO Resp. 9—24.
`
`Therefore, for the same reasons as discussed above with respect to claim 1,
`
`we determine Petitioner has demonstrated, by a preponderance of the
`
`3 Some terminology in claim 26 is slightly different than the terminology
`used in claim 1, but neither party argues the claims should be construed
`differently. See EX. 1001, 12:27—41, 13:64—14:10. The differences in
`terminology in claims 1 and 26 do not affect our analysis of Petitioner’s
`challenges.
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`17
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`Patent 8,288,952 B2
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`evidence, that claim 26 would have been obvious in view of the combined
`
`teachings of Jahagirdar and Schultz.
`
`5. Claim 23
`
`Petitioner further contends Jahagirdar discloses the additional
`
`limitation of claim 23, Pet. 43; Pet. Reply 15-16, which depends directly
`
`from claim 1 and further recites “automatically deactivating the visible
`
`indication a predetermined period of time after it was activated.” Ex. 1001,
`
`13:52—55. In particular, Petitioner asserts Jahagirdar displays a blank screen
`
`on display element 516, then displays new display information after
`
`actuation of key 150, and finally redisplays a blank screen when controller
`
`504’s timer times out. Pet. 43; Pet. Reply. 16.
`
`Patent Owner argues first display element 516 is never automatically
`
`deactivated, but is only deactivated manually by the user flipping the phone
`
`open. PO Resp. 22—23. Patent Owner’s argument relates to its previous
`
`argument that “activating a visible indication” is not met by Jahagirdar
`
`because flipping the phone closed is the only way to activate display element
`
`516.
`
`However, as discussed above with respect to claim 1, Petitioner
`
`asserts Jahagirdar’s disclosure of sending new information to display 516 in
`
`response to actuation of key 150 teaches “activating a visible indication in
`response to an activation signal received from the user interface,” as recited
`
`in claim 1. Pet. 35; Ex. 1004, 12:27—41, 13:52—55. When new information
`
`is sent to display 516, Jahagirdar discloses setting a timer such that when the
`
`timer times out and the new display information is deactivated, the display
`of information on display element 516 is automatically deactivated, because
`
`it returns either to a blank screen or to a screen with different information
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`18
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`displayed. Ex. 1004, 5:55—65; Ex. 1022 fl 7. Thus, we agree that Jahagirdar
`
`teaches “the step of automatically deactivating the visible indication a
`
`predetermined period of time after it was activated,” as recited in claim 23.
`
`Accordingly, we determine Petitioner has demonstrated, by a
`
`preponderance of the evidence, that claim 23 ofthe ’952 patent would have
`
`been obvious in view of the‘combined teachings of Jahagirdar and Schultz.
`
`6. Claims 2—4, 14, 16, 17, I9, 22, 24, 27, and 38—40
`
`Patent Owner presents no additional arguments for claims 2—4, 14, 16,
`
`17, 19, 22, 24, 27, and 38—40 beyond its arguments with respect to claims 1
`and 26, from which they ultimately depend; We have reviewed Petitioner’s
`
`assertions regarding the alleged disclosure of Jahagirdar with respect to the
`
`additional limitations recited in claims 2—4, 14, 16, 17, 19, 22, 24, 27, and
`
`38—40, and we agree with and adopt Petitioner’s assertions regarding the
`
`combined teachings of Jahagirdar and Schultz. As discussed above, we
`
`agree with Petitioner that an ordinarily skilled artisan would have looked to
`
`Schultz for the teaching of a touch sensor and would have been motivated to
`
`combine the touch sensor with Jahagirdar for the reasons stated. For the
`
`foregoing reasons, we determine Petitioner has shown, by a preponderance
`
`of the evidence, that claims 2—4, 14, 16, 17, 19, 22, 24, 27, and 38—40 of the
`
`’952 patent would have been obvious in View of the combined teachings of
`
`Jahagirdar and Schultz.
`
`III. CONCLUSION
`
`Based on the evidence and arguments, Petitioner has demonstrated by
`
`a preponderance of the evidence that claims 1—4, 14, 16, 17, 19, 22—24, 26,
`
`27, and 38—40 of the ’952 patent are unpatentable under 35 U.S.C. § 103(a)
`
`as obvious over Jahagirdar and Schultz.
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`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that claims 1—4, 14, 16, 17, 19, 22—24, 26, 27, and 38—40
`
`of the ’952 patent have been shown to be unpatentable; and
`
`FURTHER ORDERED that, because this is a final written decision,
`
`parties to the proceeding seeking judicial review of the decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`IPR2015-01151
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`Patent 8,288,952 B2
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`FOR PETITIONER:
`
`Daniel J. Goettle
`
`John F. Murphy
`Sarah C. Dukmen
`
`d oettle bakerlaw.com
`
`johnmumhngbakerlaWLOIn
`MSFT-GT@bakerlaw.com
`BAKER & HOSTETLER LLP
`
`FOR PATENT OWNER:
`
`William H. Mandir
`
`Peter S. Park
`
`Brian K. Shelton
`
`Fadi N. Kiblawi
`
`wmandir@sughrue.com
`Qsparngsughrue£0m
`bshelton su hrue.com
`
`fl<iblawi@sughrue.com
`SUGHRUE NHON, PLLC
`
`21
`
`
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