Microsoft Corp v. Global Touch Solutions LLC

1. Case Identification

• Case #: IPR2015-01025
• Patent #: 7,265,494
• Filed: April 10, 2015
• Petitioner(s): Microsoft Corporation and Nokia Inc.
• Patent Owner(s): Global Touch Solutions, LLC
• Challenged Claims: 1, 3, 5, 12-14, 18, 20, 29, 30, 34, and 35

2. Patent Overview

• Title: Microchip-Controlled Switches
• Brief Description: The ’494 patent describes an electronic unit with a microchip-controlled switch for activating a load. The system includes features such as a touch sensor, a find-in-the-dark indicator, and proximity sensing capabilities.

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 all limitations of independent claim 1 across two separate but compatible embodiments. Bruwer’s Figure 11 embodiment taught an electronic unit with a microchip coupled to a touch sensor for activating a visible "find-in-the-dark" indicator (an LED). Bruwer's Figure 3 embodiment taught a separate switch that is "not a serial element" in the power circuit, which is coupled to a microchip to control the main load. Petitioner contended that combining the user interface of Figure 11 (touch sensor for an indicator) with the load control circuit of Figure 3 (switch for the load) renders claim 1 obvious. For dependent claims, Petitioner asserted Bruwer also taught an automatic delayed shut-off function (claim 3) and the use of a "push button" switch (claim 20).
  • Motivation to Combine: A POSITA would combine Bruwer’s Figure 3 and Figure 11 embodiments to create a more functional and intuitive device. The combination would predictably add the useful find-in-the-dark feature from Figure 11 to the main load control circuit of Figure 3, using a single microchip. Petitioner argued this was a simple combination of two compatible embodiments from the same reference to achieve predictable results.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved integrating well-understood circuit designs disclosed in the same reference to perform their respective, predictable functions.

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 (International Publication No. WO 00/22890) and Hinckley (Application # 2001/0011995).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring proximity sensing. Petitioner argued that while Bruwer disclosed the foundational circuit with a contact-based touch sensor, it did not explicitly teach proximity detection. Hinckley remedied this deficiency by disclosing the use of proximity sensors in small electronic devices to provide feedback, such as illuminating an LED as a user’s hand approaches a control. Hinckley taught that its capacitive sensors could generate signals based on proximity to a user. The combination of Bruwer’s circuit with Hinckley’s proximity sensor technology would meet the limitations of the challenged claims, including activating an indicator upon proximity detection (claims 5, 12, 34), providing both proximity and touch signals (claims 13-14), and giving a power level indication (claims 18, 35).
  • Motivation to Combine: A POSITA would combine these references to improve upon Bruwer's design. Substituting Bruwer's contact-based touch sensor with Hinckley's proximity sensor was a simple design choice to gain well-known advantages. These advantages included easier device activation in the dark, increased durability by avoiding mechanical switch wear, and providing a more intuitive user interface. This modification was argued to be a predictable substitution of one known element for another.
  • Expectation of Success: Success was expected because incorporating a known proximity sensor (Hinckley) into a known electronic switch circuit (Bruwer) was a routine integration task for a POSITA in 2004.

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 to the load. This construction was central to the argument that the switch in Bruwer's Figure 3, which provides a signal to the microchip rather than directly completing the load circuit, met this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition was that the challenged claims were not entitled to the 1998 or 1999 priority dates of the parent applications. Petitioner argued that key claim features, such as the combination of a load-activating switch with an indicator-activating touch sensor and the concept of proximity sensing, constituted new matter first introduced in the 2004 continuation-in-part (CIP) application that led to the ’494 patent. Therefore, Petitioner asserted the effective filing date for all challenged claims was October 12, 2004, which renders Bruwer (published in 2000) and Hinckley (published in 2001) valid prior art references 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.