PTAB

IPR2019-00356

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

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1. Case Identification

  • Case #: IPR2019-00356
  • Patent #: 5,796,183
  • Filed: November 29, 2018
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): Byron Hourmand
  • Challenged Claims: 28, 32, 36, 83-88, and 90-93

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, an input touch terminal for an operator to provide input, and a touch circuit that provides a detection signal to a microcontroller.

3. Grounds for Unpatentability

Ground 1: Claims 32 and 36 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 a keypad composed of multi-electrode touchpads, an oscillator, and a microcomputer to detect touch. Ingraham taught a simpler touch sensor with a single touch plate that detects a user's proximity by sensing the user's body capacitance to ground. The core of the argument was that a person of ordinary skill in the art (POSITA) would substitute Ingraham's simpler and more effective touch plate for each of Caldwell's more complex multi-electrode touchpads.
    • Motivation to Combine: A POSITA would combine the references to achieve the known advantages of Ingraham's design, including improved proximity detection (detecting a touch from a greater distance) and a simplified touch pad structure (fewer electrodes), which would reduce manufacturing costs.
    • Expectation of Success: The combination involved a simple substitution of one known type of touch sensor for another. Petitioner argued a POSITA would expect success because the underlying detection principle—sensing a change in a signal due to user interaction—remains the same, and any required adjustments, such as recalibrating detection thresholds in Caldwell's detector circuit, would have been routine.

Ground 2: Claim 28 is obvious over Caldwell and Ingraham in view of Tucker.

  • Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), and Tucker (Patent 4,308,443).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Caldwell and Ingraham by adding the teachings of Tucker. Tucker described a cooktop with a safety feature where an "UNLOCK" touch pad must be pressed first, after which other commands (like temperature adjustments) are enabled for a predetermined time period (e.g., five seconds). This teaching was mapped to the limitation in dependent claim 28, which requires a control signal to be generated only when a second touch occurs within a predetermined time after a first touch.
    • Motivation to Combine: A POSITA would have been motivated to add Tucker's timed lockout feature to the Caldwell/Ingraham cooktop system to increase operational safety. This would prevent inadvertent activation or adjustment of the cooktop, particularly by children, which could result in injury.
    • Expectation of Success: Incorporating a timed, sequential input logic into a microcontroller-based system like Caldwell's was a predictable and well-understood design modification. Since Tucker described a similar application (a cooktop touch circuit), a POSITA would have had a high expectation of successfully implementing this safety feature.

Ground 3: Claims 83-85 and 93 are obvious over Caldwell and Ingraham in view of Redmayne.

  • Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), and Redmayne (Patent 5,650,597).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added Redmayne to the base combination to teach specific voltage relationships. Redmayne taught a capacitive touch sensor circuit where a processor is powered by a standard +5V supply. Petitioner argued that claim 83 requires the peak voltage of the oscillator's signal to be "greater than a supply voltage," which Petitioner construed as the microcontroller's supply voltage. By adopting Redmayne's industry-standard 5V supply for Caldwell's microcontroller, the existing 12V peak signal voltage in Caldwell would satisfy this limitation.
    • Motivation to Combine: Caldwell did not specify a particular supply voltage for its microcontroller. A POSITA would have been motivated to consult the prior art for conventional supply voltages and would have found the 5V standard, as taught by Redmayne, to be an obvious design choice. Using an industry-standard voltage increases component availability, provides design flexibility, and can lead to cost savings.
    • Expectation of Success: Applying a standard 5V supply voltage to power a microcontroller is a routine and predictable step in circuit design. This modification would not negatively affect the operation of the rest of the combined Caldwell/Ingraham circuit.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining the Caldwell/Ingraham/Redmayne art with Schwarzbach (Patent 4,418,333) to add a battery backup, with Ingraham ’548 (Patent 4,731,548) to add a voltage regulator, and with Meadows (Patent 4,922,061) to add frequency-hopping capabilities to reduce electromagnetic noise.

4. Key Claim Construction Positions

  • "providing signal output frequencies" (claims 27, 83): Petitioner argued this term should be construed broadly. Based on dependent claims 85 (frequencies having the "same hertz value") and 86 (frequency "selected from a plurality of hertz values"), Petitioner contended the term encompasses providing either a single frequency or multiple frequencies, and that frequencies with the "same hertz value" are the same frequency.
  • "supply voltage" (claim 83): Petitioner argued this term should be construed to mean "a supply voltage of the microcontroller." This construction was based on the term's placement within a "wherein" clause describing the microcontroller and was supported by the Board's finding in a prior IPR on the ’183 patent.
  • "coupled" (claims 27, 83): Petitioner argued this term should be construed to include both direct and indirect coupling (i.e., via intervening components). This was based on disclosures in the ’183 patent itself showing components connected through other elements, such as resistors.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on a prior IPR filed by Samsung. Petitioner asserted that several factors weighed against denial, primarily that the Patent Owner waited over two years after suing Samsung to sue Apple, doing so only after the Samsung IPR concluded. Petitioner argued it did not face the "same threat at the same time" as Samsung. Furthermore, Petitioner contended this petition relied on different disclosures from the prior art, used Caldwell as a primary reference (unlike the Samsung IPR), and presented new prior art and invalidity theories not previously considered by the Board.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 28, 32, 36, 83-88, and 90-93 of the ’183 patent as unpatentable.