Apple Inc. v. UUSI, LLC d/b/a NARTRON

1. Case Identification

• Case #: IPR2019-00355
• Patent #: 5,796,183
• Filed: November 29, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Byron Hourmand
• 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 relates to a capacitive responsive electronic switching circuit. The circuit includes an oscillator providing a periodic output signal, an input touch terminal for user interaction, and a touch circuit that provides a detection signal to a microcontroller.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Caldwell and Ingraham - Claims 40, 45, 47-48, 105-106, 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 argued that Caldwell taught the foundational touch control system, including an oscillator, a microcomputer, and a keypad comprising multiple touchpads. Ingraham, which was cited in the ’183 patent’s background, taught a simpler capacitive touch switch using a single touch plate that detects proximity by sensing changes in capacitive coupling to ground. The proposed combination involved substituting Ingraham's simpler touch plate for each of Caldwell's more complex multi-electrode touchpads. This combination was alleged to teach the claimed circuit comprising an oscillator, microcontroller, detector circuit, and a keypad of touch terminals that respond to proximity and touch.
  • Motivation to Combine: A POSITA would combine Ingraham with Caldwell to gain significant advantages. The primary motivations asserted were to improve proximity detection, as Ingraham’s design does not require direct conductive contact, and to reduce manufacturing costs by simplifying the touch pad structure from multiple electrodes (per Caldwell) to a single electrode (per Ingraham).
  • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success. The combination involved the simple substitution of one known type of capacitive sensor for another to achieve a predictable result. Any potential signal differences resulting from the substitution could be addressed by routine recalibration of the detector circuit's threshold voltage, a standard practice in the art.

Ground 1B: Obviousness over Caldwell, Ingraham, and Meadows - 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 builds upon the Caldwell/Ingraham combination by further modifying the circuit’s oscillator based on Meadows. Meadows taught a touch panel system that cyclically varies its operating frequency to reduce susceptibility to electromagnetic noise. Specifically, Meadows described a microprocessor generating a pseudo-random number to select a new frequency from a predefined range (150-250 kHz). This teaching was mapped to the challenged claims requiring the selection of signal output frequencies from a plurality of hertz values greater than 50 kHz and 100 kHz.
  • Motivation to Combine: A POSITA would combine Meadows' teachings to enhance the robustness of the Caldwell/Ingraham circuit. By regularly cycling the operating frequency, the modified circuit would have reduced susceptibility to ambient electromagnetic noise and would also generate less noise at any single frequency, leading to greater operational resilience and more predictable performance.
  • Expectation of Success: The combination was presented as predictable. Meadows’ technique was designed for a similar touch circuit and operated within a frequency range (150-250 kHz) compatible with Caldwell's system. The use of a microcontroller to generate random numbers was well-known, making the modification a straightforward implementation for a POSITA.

Ground 1C: Obviousness over Caldwell, Ingraham, and Leach - 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 modifies the oscillator of the base Caldwell/Ingraham combination with the teachings of Leach. Leach taught a low-power oscillator circuit specifically designed to produce an output voltage that is greater than its own power supply voltage. This was mapped to claim 37’s limitation requiring an "oscillator voltage" to be "greater than a supply voltage."
  • Motivation to Combine: The motivation was to simplify the overall circuit design and reduce costs. By incorporating Leach's oscillator, the system could generate a higher voltage output signal required for the touch pads while allowing the oscillator itself to be powered by the same lower-voltage supply as the rest of the circuit components, thus eliminating the need for a second, higher-voltage power source for the oscillator.
  • Expectation of Success: Leach described a general-purpose oscillator compatible with various digital processing systems. Petitioner argued a POSITA would have viewed it as a suitable, off-the-shelf component to substitute for Caldwell's oscillator, expecting it to function compatibly and predictably within the combined system.

4. Key Claim Construction Positions

• "providing signal output frequencies" (claims 37, 40, 105): Petitioner argued this term must be interpreted to encompass the situation where the provided frequencies are all the same, not necessarily different. This construction was based on language in dependent claims (e.g., claim 45) which further limit the frequencies to having the "same hertz value."
• "supply voltage" (claim 37): Petitioner argued this term should be construed as "a supply voltage of the oscillator" itself, rather than a supply voltage for another circuit component. This was supported by the claim's context and a finding from the Board in a previous IPR on the same patent.
• "coupled" (claims 37, 40, 105): Petitioner asserted this term should be construed to include indirect coupling through intervening components, not just direct connections. This position was based on disclosure and figures within the ’183 patent specification showing such indirect connections.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion under §314(a) to deny institution based on a prior IPR filed by Samsung against the ’183 patent.
• Petitioner contended that this petition presented the prior art in a different light, relied on different disclosures within those references, and used Caldwell as a primary reference whereas Samsung had used it only for corroboration. It was also argued that the General Plastic factors weighed heavily against denial, as this was Apple's first challenge, and any delay in filing was due to the Patent Owner waiting until after the Samsung IPR concluded to file suit against Apple.

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.