Apple Inc v. Uusi LLC

1. Case Identification

• Case #: IPR2019-00355
• Patent #: 5,796,183
• Filed: November 29, 2018
• Petitioner(s): Apple Inc.
• Challenged Claims: 37-43, 45, 47-48, 105-109, 115-116

2. Patent Overview

• Title: Capacitive Responsive Electronic Switching Circuit
• Brief Description: The ’183 patent discloses a capacitive electronic switching circuit for a keypad device. The circuit includes an oscillator providing a periodic signal, an input touch terminal for user interaction, and a touch circuit that provides a detection signal to a microcontroller to determine proximity or touch.

3. Grounds for Unpatentability

Ground 1: Claims 40, 45, 47-48, 105-106, and 115-116 are obvious over Caldwell in view of Ingraham.

• Prior Art Relied Upon: Caldwell (Patent 5,572,205) and Ingraham (Patent 4,758,735).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Caldwell taught a touch control system with key elements of the independent claims, including an oscillator (high-frequency line driver), a microcomputer, and a keypad composed of multiple touch pads. Caldwell’s system, however, used a complex three-electrode structure for each touch pad. Ingraham taught a simpler, single-electrode capacitive touch plate that detected a user's presence by sensing the user's body capacitance to ground. Petitioner argued that substituting Ingraham’s simpler touch plate for each of Caldwell’s touch pads would result in the claimed invention, including a detector circuit responsive to body capacitance for providing a control signal.
  • Motivation to Combine: A POSITA would combine the references to simplify Caldwell's design and reduce manufacturing costs by replacing a three-electrode touch pad with Ingraham's single-electrode touch plate. A POSITA would also be motivated by Ingraham's known advantage of improved proximity detection, making the resulting keypad more responsive and easier to use.
  • Expectation of Success: Petitioner argued that the combination was a simple substitution of one known type of touch sensor for another. A POSITA would have had a high expectation of success, as the underlying technologies were compatible and widely used. Any difference in signal voltage from the substitution could have been addressed by routine recalibration of the detector circuit's threshold, a standard practice in the art.

Ground 2: Claims 41-43 and 107-109 are obvious over Caldwell and Ingraham in view of Meadows.

• Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), and Meadows (Patent 4,922,061).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Caldwell and Ingraham. Petitioner asserted that Meadows taught a touch panel system that varied its detection signal frequency in a pseudo-random manner to reduce susceptibility to electromagnetic interference. This teaching directly addressed limitations in the challenged dependent claims that require the signal output frequency to be selected from a plurality of hertz values greater than 50 kHz and 100 kHz.
  • Motivation to Combine: A POSITA would incorporate Meadows' frequency-hopping technique into the Caldwell/Ingraham base circuit to improve its performance. The motivation was to create a more robust touch system with greater resilience to external electromagnetic noise and that generated less interference itself, leading to more predictable performance and better interoperability with other electronic components.
  • Expectation of Success: The frequency range taught by Meadows (150-250 kHz) was well within the operating range of Caldwell's circuit (up to 500 kHz), making the integration straightforward and predictable. The use of a microprocessor to generate pseudo-random numbers, as taught by Meadows, was a well-known technique.

Ground 3: Claims 37-39 are obvious over Caldwell and Ingraham in view of Leach.

• Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), and Leach (Patent 4,560,954).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also used the Caldwell and Ingraham combination as a base. Petitioner argued that Leach taught a low-power oscillator circuit specifically designed to produce an output voltage greater than its power supply voltage. This mapped directly to the limitation in claim 37 "wherein an oscillator voltage is greater than a supply voltage."
  • Motivation to Combine: A POSITA would be motivated to replace Caldwell's oscillator with the oscillator from Leach to simplify the overall circuit design and reduce costs. Leach’s design would allow the oscillator to be powered from the same low-voltage source as other circuit components while still generating the higher-voltage output signal needed for touch detection, thereby eliminating the need for a second, dedicated higher-voltage power source.
  • Expectation of Success: Petitioner contended that Leach described a general-purpose oscillator suitable for a wide variety of applications. Substituting it for the oscillator in the Caldwell/Ingraham combination was a predictable design choice for a POSITA seeking circuit simplification and cost savings, with a high expectation of success.

4. Key Claim Construction Positions

• "providing signal output frequencies" (claims 37, 40, 105): Petitioner argued this phrase must be construed to encompass situations where each provided frequency has the same hertz value. This construction was based on the doctrine of claim differentiation, as dependent claim 45 explicitly recites that each frequency has the "same hertz value," meaning the independent claim must be broad enough to cover this embodiment.
• "supply voltage" (claim 37): Petitioner asserted this term should be construed as "a supply voltage of the oscillator." This interpretation was supported by the claim's context, which compares the "oscillator voltage" to the "supply voltage," and by a prior Board decision in IPR2016-00908 involving the same patent.
• "coupled" (claims 37, 40, 105): Petitioner argued that "coupled" should be construed to include indirect coupling through intervening components. This position was based on disclosures in the ’183 patent itself, where figures illustrate components being "coupled" via other elements like resistors.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a), despite a prior IPR on the ’183 patent filed by Samsung (IPR2016-00908). Petitioner asserted that the General Plastic factors weighed against denial because Apple had not previously challenged the patent and was not involved in the Samsung IPR. Furthermore, Petitioner contended that any delay in filing was attributable to the Patent Owner, who waited over two years after suing Samsung to sue Apple. Finally, Petitioner argued its petition presented the prior art in a different light, using Caldwell as the primary reference, whereas the prior IPR had used it only for corroboration.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 37-43, 45, 47-48, 105-109, and 115-116 of the ’183 patent as unpatentable.