PTAB

IPR2019-00357

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

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1. Case Identification

  • Case #: IPR2019-00357
  • Patent #: 5,796,183
  • Filed: November 29, 2018
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): Byron Hourmand
  • Challenged Claims: 61-69, 90-91, 93-94, 96-99, 101-102, 104

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 input via proximity or touch, and a touch circuit that provides a detection signal to a microcontroller.

3. Grounds for Unpatentability

Ground 1A: Claims 61-63, 66, 93, 94, 96, and 104 are obvious over Caldwell, Ingraham, and 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: Petitioner asserted that Caldwell teaches a touch control system with most of the required elements, including an oscillator, a keypad of touchpads on a dielectric substrate, and a detector circuit with a microcontroller. However, Caldwell's touchpads are complex. Petitioner argued for substituting Caldwell's touchpads with the simpler, single-electrode touch plate taught by Ingraham, which is emblematic of sensors that detect changes in body capacitance to ground. To meet the limitation that the oscillator's peak voltage exceeds the microcontroller's supply voltage, Petitioner introduced Redmayne, which teaches a standard 5-volt supply for its processor (microcontroller), a value lower than the 12-volt peak oscillator voltage disclosed in Caldwell.
    • Motivation to Combine: A POSITA would combine Ingraham with Caldwell to gain the known advantages of Ingraham's design, including improved proximity detection and reduced manufacturing costs due to a simpler electrode structure. This substitution would be made while retaining Caldwell's high-frequency operation, which provides immunity to surface contaminants. A POSITA would then look to art like Redmayne to supply a conventional, industry-standard 5-volt supply to the microcontroller, as Caldwell does not specify a voltage.
    • Expectation of Success: The combination was presented as a simple substitution of one known type of touch sensor for another to gain predictable benefits. A POSITA would have reasonably expected success, as any minor differences in signal level could be addressed by routine recalibration of the detection circuit's threshold voltage.

Ground 1B: Claims 64, 90, and 101 are obvious over Caldwell, Ingraham, Redmayne, and Schwarzbach.

  • Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), Redmayne (Patent 5,650,597), and Schwarzbach (Patent 4,418,333).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination in Ground 1A and adds Schwarzbach to teach the claimed "battery supply voltage." Schwarzbach discloses using a battery to power a microprocessor to retain stored information in the event of an AC power failure.
    • Motivation to Combine: A POSITA would combine Schwarzbach's battery backup with the base combination to make the touch system more resilient to power failures. This would prevent the inconvenience of resetting user preferences (e.g., cooktop temperatures) and was argued to be an obvious design choice to improve product robustness.

Ground 1C: Claims 65, 91, and 102 are obvious over Caldwell, Ingraham, Redmayne, and Ingraham ’548.

  • Prior Art Relied Upon: Caldwell (Patent 5,572,205), Ingraham (Patent 4,758,735), Redmayne (Patent 5,650,597), and Ingraham ’548 (Patent 4,731,548).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground modifies the base combination of Ground 1A by adding Ingraham ’548 to teach a "voltage regulator supply voltage." Ingraham ’548 discloses a DC power supply that includes a voltage regulator circuit to regulate the supply voltage for a touch-controlled circuit.
    • Motivation to Combine: A POSITA would be motivated to add a voltage regulator as taught by Ingraham ’548 to the base combination to ensure a constant supply voltage and protect the electronic components from damage due to voltage fluctuations. This was presented as a common and obvious technique for improving the reliability of electronic circuits.

Ground 1D: Claims 67-69 and 97-99 are obvious over Caldwell, Ingraham, Redmayne, and 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 modifies the base combination by incorporating the teachings of Meadows. Meadows teaches a touch panel system that varies its detection signal frequency in a pseudo-random manner (e.g., between 150 and 250 kHz) to meet the claim limitation of selecting frequencies from a "plurality of hertz values."
    • Motivation to Combine: A POSITA would be motivated to incorporate the frequency-hopping technique from Meadows to "reduce the susceptibility of the" touch circuit "to electromagnetic noise." This modification would predictably lead to a more resilient circuit with greater interoperability and more reliable performance in various environments.

4. Key Claim Construction Positions

  • "providing signal output frequencies" (claims 61, 94): Petitioner argued that, based on the doctrine of claim differentiation with dependent claims 66 and 67, this term must be construed to encompass scenarios where the provided frequencies are the same, as well as scenarios where they are selected from a plurality of different hertz values.
  • "supply voltage" (claims 61, 94): Petitioner asserted this term refers specifically to the supply voltage of the microcontroller, not another component. This construction was supported by the term's placement in a "wherein" clause describing the microcontroller and by a prior PTAB determination in a related case (IPR2016-00908).
  • "coupled" (claims 61, 94): Petitioner argued this term should be construed to include both direct and indirect coupling (i.e., via intervening components). This was based on examples in the ’183 patent's own specification showing components connected through other elements like resistors.

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 (IPR2016-00908).
  • The petition contended it was not duplicative because it presented the prior art in a different light, such as using Caldwell as the primary base system rather than for mere corroboration as Samsung had.
  • Petitioner argued that any delay in its filing was caused by the Patent Owner, who waited over two years after the Samsung IPR concluded before suing Apple. Therefore, Apple did not face the "same threat at the same time" as Samsung and should not be penalized for the Patent Owner's litigation strategy.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 61-69, 90-91, 93-94, 96-99, 101-102, and 104 of the ’183 patent as unpatentable.