PTAB

IPR2015-01025

Microsoft Corp v. Global Touch Solutions LLC

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1. Case Identification

2. Patent Overview

  • Title: Electronic Unit for Use with a Product Connected to a Power Source
  • Brief Description: The ’494 patent discloses an electronic unit for microchip-controlled switches. The technology is directed at controlling a load (e.g., a flashlight bulb) and a separate indicator (e.g., a "find-in-the-dark" LED) using distinct user interface inputs, including touch and proximity sensors.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bruwer - Claims 1, 3, and 20 are obvious over Bruwer.

  • Prior Art Relied Upon: Bruwer (International Publication No. WO 00/22890).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bruwer disclosed every limitation of independent claim 1, albeit across two separate embodiments. Bruwer’s Figure 3 embodiment disclosed an electronic unit with a switch (102) that is "not a serial element" and acts as a user interface to control a load (105) via a microchip (103). Bruwer's Figure 11 embodiment disclosed a separate circuit with a touch sensor (1111) that controls a visible "find-in-the-dark" indicator (LED 1104). The combination of these two disclosed embodiments renders claim 1 obvious. Dependent claim 3 (automatic delayed termination) and claim 20 (push-button switch) were also argued to be expressly taught or suggested by Bruwer.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Bruwer’s Figure 3 and Figure 11 embodiments to achieve their predictable, combined benefits. A POSITA would have sought to create a device with a primary switch to control the main load and a separate touch sensor to control a locator light, a common design goal for devices like flashlights. Combining these two compatible circuits from the same reference, which use a common microchip architecture, was presented as a simple and intuitive design modification to gain the functionality of both.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the two compatible embodiments from Bruwer involved applying known design principles to achieve a predictable result. Each component (the load-control switch and the indicator-control touch sensor) performs its same function in the combined circuit as it did in the individual disclosed embodiments.

Ground 2: Obviousness over Bruwer in view of Hinckley - Claims 5, 12-14, 18, 29, 30, 34, and 35 are obvious over Bruwer in view of Hinckley.

  • Prior Art Relied Upon: Bruwer (WO 00/22890) and Hinckley (Application # 2001/0011995).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses the challenged claims that recite proximity sensing. Petitioner asserted that the combination of Bruwer and Hinckley disclosed all limitations. Bruwer provided the foundational circuit with a microchip controlling a load and a touch-activated indicator. Hinckley taught the missing element: replacing a physical-contact sensor with a proximity sensor (e.g., a capacitive sensor) to activate functions. Hinckley explicitly disclosed using proximity sensing to provide visual feedback (e.g., lighting an LED on a control knob) "as a user approaches a control," without requiring physical contact.
    • Motivation to Combine: A POSITA would combine the references by substituting the touch sensor in Bruwer’s circuit with the proximity sensor taught by Hinckley to gain the well-known advantages of proximity sensing. These advantages included activating a device in the dark without needing to physically locate a button, improving device durability by eliminating mechanical parts, and creating a more intuitive and appealing user interface. Petitioner argued this was a routine and trivial design choice, as proximity sensing was a known and desirable alternative to physical touch sensing in the art.
    • Expectation of Success: A POSITA would have expected success in this combination because it involved the simple substitution of one known type of sensor (physical touch) for another known type (proximity) to perform the same function (activating an indicator) for a known purpose. Hinckley confirmed the applicability of proximity sensors to small electronic devices similar to those in Bruwer.

4. Key Claim Construction Positions

  • "Not a Serial Element" / "Not Forming a Serial Link": Petitioner argued that these terms, recited in claims 1 and 29 respectively, should be construed to mean "not in electrical series" with the main power circuit connecting the power source and the load. This construction was central to their argument, as it allowed them to map Bruwer's Figure 3, where switch 102 provides a low-power signal to the microchip rather than directly switching the high-power load circuit, to the claim language.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Priority Date: A central contention of the petition was that the challenged claims of the ’494 patent were not entitled to the 1998 or 1999 priority dates of its parent applications. Petitioner argued the ’494 patent, a continuation-in-part (CIP), added new matter in its 2004 filing that was essential to the challenged claims. Specifically, the parent applications allegedly failed to provide written description support for a single embodiment combining a load-activating switch with an indicator-activating touch sensor, or for any proximity-sensing features. Therefore, Petitioner asserted the effective filing date for all challenged claims is the 2004 CIP filing date, making Bruwer (published in 2000) and Hinckley (published in 2001) valid prior art under §102(b).

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 5, 12-14, 18, 20, 29, 30, 34, and 35 of the ’494 patent as unpatentable under 35 U.S.C. §103.