PTAB

IPR2015-01151

Microsoft Corp v. Global Touch Solutions LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Microchip Controlled Electrical Current Switching Devices
  • Brief Description: The ’952 patent relates to microchip-controlled electrical current switching devices. The specification describes the invention in the context of "intelligent hand-held flashlights," aiming to solve problems with prior art mechanical switches, such as susceptibility to wear and tear and causing battery exhaustion when left on. The purported solution is a microchip that manages switching functions, allowing for features like automatic shut-off and dimming, and using low-current interface components like touch pads to minimize mechanical wear. While the original focus was on flashlights, the challenged claims are directed more broadly to an electronic module and method for implementing a user interface for a generic product.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40 are obvious over Jahagirdar in view of Schultz.

  • Prior Art Relied Upon: Jahagirdar (Patent 6,125,286) and Schultz (Patent 4,053,789).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jahagirdar teaches the foundational product claimed in the ’952 patent, while Schultz provides the obvious modification to arrive at the claimed invention. Jahagirdar discloses a mobile phone—a product with a power source (battery 128), an energy-consuming load (display element 516), and an electronic module (circuitry 500). This module includes a microchip (controller 504) that processes signals from a user interface composed of mechanical keys (144). Petitioner asserted that Jahagirdar’s controller already performs claimed functions, such as activating a visible indication (the display) to provide information on battery status. The only missing element was the use of a touch sensor instead of mechanical keys. Schultz explicitly teaches a reliable touch-actuated sensor designed to replace conventional electric switches. Petitioner argued that replacing Jahagirdar's mechanical keys with Schultz's touch sensor renders the independent claims obvious. Further, Petitioner contended that Jahagirdar's inherent features as a mobile phone—such as its backlight timer, audio circuitry, and RF circuitry—directly map to the limitations of dependent claims 2-4, 14, and 24.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Schultz's touch sensor with Jahagirdar's mobile phone for several well-understood reasons. First, to improve durability and reliability by replacing mechanical buttons, which were known to suffer from wear and contamination, with Schultz’s solid-state sensor that has no moving parts. This was particularly relevant for a portable device like a mobile phone. Second, to prevent inadvertent actuation (e.g., in a user's pocket), as Schultz's sensor was specifically designed for reliability and required both physical contact and inherent body capacitance to activate. Third, to enhance user convenience and aesthetics, which were widely recognized benefits of touch interfaces at the time.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success in making this combination. By 1998, touch sensor technology was well-known and had already been applied to telephones. Substituting one known user input component (mechanical buttons) for another (touch sensors) to gain the sensor's known benefits was a predictable design choice and a trivial adjustment for a skilled artisan.

4. Key Claim Construction Positions

  • "the touch sensor functions" (claim 1) and "the touch sensing functions" (claim 26): Petitioner argued that under the broadest reasonable interpretation, these phrases should be construed to mean "the activities performed by the touch sensor." This construction was based on the specification's language, which distinguishes the man-machine-interface ("MMI") functions controlled by the microchip from the actions of the interface components themselves (e.g., touch pads). Petitioner asserted this interpretation is supported by the structure of dependent claims 2 and 27, which recite "a function of the product" in contrast to the sensor functions of the independent claims. Petitioner also argued that even under an alternative construction of "functions controlled by the touch sensor," the claims would remain obvious for the same reasons.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not deny institution on the basis of redundancy with a separate IPR petition filed by Apple Inc. against the same ’952 patent (IPR2015-01175). The petition stated that it presented distinct challenges because the parties are different, the asserted prior art is entirely different (Jahagirdar and Schultz vs. a patent directed to an intelligent battery pack), and the supporting expert declarations are from different witnesses.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40 of the ’952 patent as unpatentable under 35 U.S.C. §103.