PTAB

IPR2016-00908

SamSung ElecTronics Co Ltd v. Uusi LLC

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1. Case Identification

  • Filed: April 15, 2016
  • Patent #: 5,796,183
  • Petitioner(s): Samsung Electronics Co., Ltd.
  • Patent Owner(s): UUSI, LLC d/b/a NARTRON
  • Challenged Claims: 37-41, 43, 45, 47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102

2. Patent Overview

  • Title: Capacitive Responsive Electronic Switching Circuit
  • Brief Description: The ’183 patent relates to a capacitive responsive electronic switching circuit. The circuit uses an oscillator to provide a periodic signal to an input touch terminal, and a touch circuit detects an operator's touch or proximity by sensing a change in capacitance, which causes a Schmitt Trigger to emit a signal indicating a touch is present.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ingraham I, Caldwell, and Gerpheide - Claims 37-41, 43, 45, 61, 64-67, 69, 83, 85, 86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are obvious over Ingraham I, Caldwell, and Gerpheide.

  • Prior Art Relied Upon: Ingraham I (Patent 5,087,825), Caldwell (Patent 5,594,222), and Gerpheide (Patent 5,565,658).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of these references teaches all limitations of the challenged claims, using independent claim 37 as a representative example. Ingraham I was presented as the primary reference, disclosing a "capacity response keyboard" with most of the core elements, including a keypad with multiple touch terminals, a touch sensing circuit for each terminal that detects a change in capacitance-to-ground, and a microcomputer to process the touch signals. However, Ingraham I uses the 115V AC power line as its oscillating signal source and requires a dedicated I/O pin for each touch terminal. Petitioner argued a POSITA would modify Ingraham I with teachings from Caldwell, which discloses a touch panel with a dedicated oscillator for use in portable systems and a matrix scanning mechanism (using a demultiplexer and multiplexer) to significantly reduce the number of I/O pins and wiring required. This modification would render a more compact and efficient device. Finally, Petitioner argued a POSITA would further combine this system with Gerpheide, which teaches varying the oscillator frequency to find a frequency with the lowest interference, thereby improving the system's resilience to electrical noise—a known problem in the art. This combination allegedly teaches the claimed microcontroller that selectively provides different "frequencies" to the touch terminals.
    • Motivation to Combine: A POSITA would combine Ingraham I and Caldwell to adapt the touch system for portable use (e.g., in an automobile) where a mains AC power source is unavailable and to create a more compact, efficient design by reducing I/O pin requirements and wiring complexity. A POSITA would further incorporate Gerpheide's teachings to solve the known problem of electrical interference in capacitive touch systems, thereby improving the reliability of the combined device in a predictable manner.
    • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because the combination involves applying known techniques (portable oscillators, matrix scanning, frequency hopping for interference rejection) to a known type of system (capacitive touch keyboard) to achieve predictable benefits.

Ground 2: Obviousness over Ingraham I, Caldwell, Gerpheide, and Wheeler - Claims 47, 48, 62, 63, and 84 are obvious over Ingraham I, Caldwell, Gerpheide, and Wheeler.

  • Prior Art Relied Upon: Ingraham I (Patent 5,087,825), Caldwell (Patent 5,594,222), Gerpheide (Patent 5,565,658), and Wheeler (Patent 5,341,036).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination asserted in Ground 1. Petitioner argued that the remaining challenged claims, particularly claims 47 and 62, require comparing a sensed capacitance change to a second threshold level. This feature, Petitioner contended, is taught by Wheeler. Wheeler discloses an AC electrical circuit for a two-hand industrial machine control that uses capacitive proximity switches. It explicitly addresses the need for safety features, requiring an operator to activate two switches in sequence within a specific time interval to actuate the machine.
    • Motivation to Combine: A POSITA looking to adapt the Ingraham-Caldwell-Gerpheide system for applications requiring enhanced safety, such as industrial controls, would have been motivated to incorporate the teachings of Wheeler. Wheeler provides an explicit reason for requiring sequential activation of two touch pads—to prevent inadvertent machine operation and injury. This would motivate a POSITA to modify the control logic to prevent generation of a control output signal until two touch sensing circuits are activated in sequence.
    • Expectation of Success: Implementing this safety logic would be a predictable modification. Petitioner argued that adding a requirement for two sequential touch events, each crossing a threshold, to trigger an output is a common-sense implementation for safety-critical applications and would have been well within the skill of a POSITA.

4. Key Claim Construction Positions

  • Petitioner presented proposed constructions for several terms while noting that the prior art renders the claims obvious under either its proposed constructions or the Patent Owner's positions from related litigation.
  • "input touch terminals": Petitioner proposed "a plurality of distinct touch pads of permanent and fixed location configured to allow detection of an operator's input only by a detector circuit or circuits." This construction emphasizes the physical, fixed nature of the pads, which aligns with the disclosure of Ingraham I.
  • "detector circuit": Petitioner proposed "an electronic circuit, separate from the microcontroller and the oscillator, that detects an increase in capacitance to ground." This distinguishes the detector from other system components and ties it directly to the physical principle of operation, a distinction central to its mapping of the prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that institution would be appropriate even though the primary reference, Ingraham I, and a secondary reference, Gerpheide, were considered during prosecution and reexamination.
  • Petitioner asserted that it was presenting these references in a new light, specifically by combining them for the first time with Caldwell and Wheeler, which were never considered by the Office.
  • Furthermore, Petitioner relied on new expert testimony from Dr. Vivek Subramanian to explain how a POSITA would have combined the teachings of all cited references to arrive at the challenged claims.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 37-41, 43, 45, 47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 of the ’183 patent as unpatentable.