Apple Inc v. Uusi LLC

1. Case Identification

• Case #: IPR2019-00356
• Patent #: 5,796,183
• Filed: November 29, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): UUSI, Inc.
• 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 for a keypad. The circuit uses an oscillator to provide a periodic signal to a touch circuit, which provides a detection signal to a microcontroller to determine when a user touches or is in proximity to an input terminal.

3. Grounds for Unpatentability

Ground 1A: 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 argued that Caldwell taught a complete capacitive touch control system with a multi-electrode touchpad, an oscillator providing a high-frequency signal, and a detector circuit with a microcontroller. However, Caldwell's touchpad structure was complex. Ingraham, which was cited in the ’183 patent’s background, taught a simpler, well-known capacitive touch switch using a single touch plate that detects changes in body capacitance to ground when an operator touches or approaches it. Petitioner asserted that the combination involved the simple substitution of Ingraham's known single-electrode touch plate for Caldwell's more complex multi-electrode touchpad.
  • Motivation to Combine: A POSITA would combine the references to gain the known advantages of Ingraham's design. These advantages included improved proximity detection, simplification of the touchpad circuitry by reducing the number of electrodes, and a corresponding reduction in manufacturing cost. The combination was presented as a predictable substitution of one known touch sensor type for another.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because both references related to capacitive touch circuits. Any necessary recalibration of Caldwell's detector circuit to accommodate the signal characteristics from Ingraham's touch plate would have been a routine and predictable task for a skilled artisan.

Ground 1C: 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 built upon the Caldwell/Ingraham combination to address claim 83's limitation requiring "a peak voltage of the signal output frequencies is greater than a supply voltage" of the microcontroller. Caldwell taught using an oscillator signal with a peak voltage of 12 volts but did not specify a supply voltage for its microcontroller. Redmayne taught a capacitive touch sensor array powered by an industry-standard 5-volt supply for its processor (microcontroller). The combination of Caldwell's 12-volt peak signal voltage with Redmayne's 5-volt microcontroller supply voltage satisfied the claim limitation.
  • Motivation to Combine: A POSITA implementing Caldwell's system would need to select a supply voltage for the microcontroller. Petitioner argued it would have been obvious to consult the prior art and select the well-known, industry-standard 5-volt supply taught by Redmayne. Using an industry-standard voltage would increase component availability, provide greater design flexibility, and reduce costs.

Ground 1F: Claims 86-88 are obvious over Caldwell, Ingraham, and Redmayne in view of Meadows.

• Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), Redmayne (Patent 5,650,597), and Meadows (Patent 4,922,061).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Meadows to address claim 86's limitation that "each signal output frequency is selected from a plurality of hertz values." The base combination used a fixed-frequency oscillator from Caldwell. Meadows taught a touch panel system that purposefully varied its operating frequency within a pseudo-random range (150-250 kHz) to improve performance. Petitioner argued for substituting Caldwell's fixed-frequency oscillator with the variable-frequency oscillator taught by Meadows.
  • Motivation to Combine: A POSITA would be motivated to incorporate Meadows's teachings to reduce the touch circuit's susceptibility to electromagnetic noise and to generate less noise itself. This modification would result in a more resilient and reliable circuit with predictable performance in various environments. The frequency range taught by Meadows (150-250 kHz) was compatible with that of Caldwell (150-500 kHz), making the substitution straightforward.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on adding further references to the core combinations. These included adding Tucker (to teach generating a control signal only when a second touch occurs within a predetermined time after a first touch), Schwarzbach (to teach a battery supply voltage for power-failure resilience), and Ingraham '548 (to teach a voltage regulator for supply voltage stability).

4. Key Claim Construction Positions

• "providing signal output frequencies" (claims 27, 83): Petitioner argued this term should be construed to include providing signals that have the "same hertz value." This construction was based on dependent claim 85, which specifies that the frequencies have the same hertz value, and therefore the independent claim must be broad enough to encompass this feature.
• "supply voltage" (claim 83): Petitioner asserted this term means "a supply voltage of the microcontroller." This interpretation was based on the term's placement within a "wherein" clause describing the microcontroller and was supported by the Board's finding in a previous IPR on the same patent.
• "coupled" (claims 27, 83): Petitioner proposed that "coupled" should be construed to include indirect coupling through intervening components. This was based on examples in the ’183 patent's own specification showing components connected via other elements like resistors.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a) based on the General Plastic factors, contending that this petition should not be denied due to a prior IPR filed by Samsung (IPR2016-00908).
• Petitioner asserted that it had not previously challenged the ’183 patent. It further argued that the current petition relied on different prior art references and presented new arguments and evidence not previously considered by the Board. Specifically, the prior Samsung IPR used Caldwell only for minor corroboration, whereas this petition used it as the primary base reference. Finally, Petitioner argued that any delay in filing was caused by the Patent Owner, who waited over two years after suing Samsung to sue Apple, and that Apple did not face the "same threat at the same time" as Samsung.

6. Relief Requested

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