Apple Inc v. Uusi LLC

1. Case Identification

• Case #: IPR2019-00358
• Patent #: 5,796,183
• Filed: November 29, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Byron Hourmand
• Challenged Claims: 37-39, 94, 96-99, 101-109, 115-117

2. Patent Overview

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

3. Grounds for Unpatentability

Ground 1: Claims 37, 94, 96, 101, 105, and 106 are obvious over Chiu in view of Schwarzbach.

• Prior Art Relied Upon: Chiu (Patent 4,561,002) and Schwarzbach (Patent 4,418,333).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chiu disclosed all elements of the challenged claims except for the specific requirement that an oscillator/output voltage be greater than a supply voltage. Chiu taught a capacitive touch panel using a commercially available Texas Instruments TMS 1670 microprocessor. Schwarzbach taught an appliance control system using the exact same TMS 1670 microprocessor and explicitly disclosed operating it with a 16-volt supply voltage and generating an 18-volt output. Petitioner contended that combining these teachings rendered the claims obvious, as the specific voltage relationship was a known characteristic of the very component Chiu specified.
  • Motivation to Combine: A POSITA implementing Chiu's circuit would be motivated to consult known operating parameters for the specified TMS 1670 microprocessor, as Chiu itself did not provide a supply voltage. Schwarzbach provided these exact parameters. Thus, a POSITA would combine the teachings to ensure the proper and known operation of the circuit. Additionally, Schwarzbach’s disclosure of a battery supply provided motivation to add a known feature for power failure resilience.
  • Expectation of Success: A POSITA would have a high expectation of success because both references used the identical, commercially available microprocessor. The result of applying Schwarzbach's known operating voltages to Chiu's circuit would be entirely predictable.

Ground 2: Claims 38, 39, 104, 115, and 116 are obvious over Chiu and Schwarzbach in view of Lawson.

• Prior Art Relied Upon: Chiu (Patent 4,561,002), Schwarzbach (Patent 4,418,333), and Lawson (Patent 4,328,408).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Chiu and Schwarzbach by adding Lawson. The challenged dependent claims added limitations requiring feedback to the operator via an indicator (e.g., an LED) activated by the microcontroller after a touch is detected. Lawson explicitly taught using a microprocessor to change LED indicators in response to keypad input to provide such feedback.
  • Motivation to Combine: A POSITA would combine Lawson's teachings with the Chiu/Schwarzbach circuit to improve usability. Providing visual feedback to a user to confirm that a touch input has been successfully registered was a well-known and desirable design choice for touch panels, reducing user error and redundant inputs.
  • Expectation of Success: The combination would yield predictable results. Adding LED indicators as user feedback was a routine and common practice in electronic interface design, and Lawson demonstrated this technique in a similar microcontroller-based system.

Ground 3: Claims 97-99 and 107-109 are obvious over Chiu and Schwarzbach in view of Meadows.

• Prior Art Relied Upon: Chiu (Patent 4,561,002), Schwarzbach (Patent 4,418,333), and Meadows (Patent 4,922,061).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring that the signal frequency be selected from a plurality of hertz values. Meadows taught a touch panel system that varied its detection signal frequency within a range (150-250 kHz) based on a pseudo-random number generator.
  • Motivation to Combine: A POSITA would be motivated to incorporate the frequency-varying technique of Meadows into the base Chiu/Schwarzbach circuit to reduce the system's susceptibility to electromagnetic noise and to generate less interference. This modification would lead to a more robust and resilient touch circuit with more predictable performance in various environments.
  • Expectation of Success: The results of the combination were argued to be predictable because Meadows described its technique in a similar touch circuit context and operated within the same general frequency range as the components in the primary references.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 102 is obvious over Chiu, Schwarzbach, and Ingraham (’548 patent) for adding a voltage regulator supply voltage, and that claim 103 is obvious over Chiu, Schwarzbach, and Tucker (’443 patent) for adding a timed safety-lockout feature.

4. Key Claim Construction Positions

• “providing signal output frequencies” (claims 37, 94, 105): Petitioner argued this term should be construed broadly to include situations where the frequencies are the same, not necessarily different. This construction was based on the language of dependent claim 96, which specifies that each frequency has a "same hertz value."
• “supply voltage” (claim 37): Petitioner contended this term should mean "a supply voltage of the oscillator." This construction was based on the term's placement within a clause describing the oscillator and was consistent with a prior PTAB decision in a related case.
• “supply voltage” (claim 94): Petitioner argued this term should mean "a supply voltage of the microcontroller." This was based on the claim's context and its placement in a clause describing the microcontroller, a construction also adopted by the PTAB in a prior review of the ’183 patent.
• “coupled” (claims 37, 94, 105): Petitioner proposed this term should be construed to include indirect coupling through intervening components, consistent with disclosures in the ’183 patent’s specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a) in view of a prior IPR filed by Samsung. Citing the General Plastic factors, Petitioner asserted that denial would be improper because this was Apple's first challenge to the ’183 patent. Petitioner argued that any delay in filing was caused by the Patent Owner, who waited to sue Apple until after the Samsung IPR had concluded. Therefore, Apple did not know of the asserted prior art and did not face the "same threat at the same time" as Samsung, making a subsequent petition appropriate and not a form of tactical, delayed filing.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 37-39, 94, 96-99, 101-109, and 115-117 of the ’183 patent as unpatentable.