Apple Inc v. Uusi LLC

1. Case Identification

• Case #: IPR2019-00359
• Patent #: 5,796,183
• Filed: November 29, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Byron Hourmand
• Challenged Claims: 27, 28, 32, 36, 83-88, and 90-93

2. Patent Overview

• Title: Capacitive Responsive Electronic Switching Circuit
• Brief Description: The ’183 patent discloses a capacitive responsive electronic switching circuit. The system includes an oscillator that provides a periodic output signal, an input touch terminal for an operator to provide input, and a touch circuit that sends a detection signal to a microcontroller which also receives the oscillator's output signal.

3. Grounds for Unpatentability

Ground 1A: Claims 27, 83-85, and 90 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 teaches a capacitive touch control panel for an appliance that uses a specific, commercially available microprocessor (a TMS 1670). While Chiu's microprocessor generates a scan signal with a 30-volt peak, it does not specify the microprocessor’s own supply voltage. Schwarzbach, which describes an appliance control system using the exact same TMS 1670 microprocessor, explicitly teaches operating it with a 16-volt supply voltage. Petitioner contended that the combination of these references renders obvious the key limitation of claim 83, wherein the peak voltage of the signal output frequencies (30V from Chiu) is greater than the supply voltage of the microcontroller (16V from Schwarzbach). Further, Schwarzbach’s teaching of a battery backup to retain information during power failure was argued to render claim 90 obvious.
  • Motivation to Combine: A POSITA, when implementing the circuit in Chiu with the specified TMS 1670 microprocessor, would be motivated to consult other references like Schwarzbach that describe the same component to determine its standard operating parameters, such as its supply voltage. Additionally, a POSITA would combine Schwarzbach’s battery backup feature to improve the reliability of Chiu's appliance circuit, a common design goal.
  • Expectation of Success: Success would have been predictable because the combination involves using a known, commercially available microprocessor with its documented operating voltage and adding a conventional battery backup feature.

Ground 1B: Claims 86-88 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 builds upon the Chiu and Schwarzbach combination by adding Meadows. Petitioner asserted that Meadows teaches a touch panel system that varies its operating frequency in a pseudo-random manner within a specific range (150-250 kHz). This teaching was mapped to the limitations of claims 86-88, which require that "each signal output frequency is selected from a plurality of hertz values," with those values being greater than 50 kHz (claim 87) and 100 kHz (claim 88).
  • Motivation to Combine: A POSITA would incorporate the frequency-hopping technique taught by Meadows into the base Chiu/Schwarzbach circuit to achieve a well-known benefit: reducing the circuit's susceptibility to electromagnetic noise and interference.

Ground 1C: Claim 91 is obvious over Chiu and Schwarzbach in view of Ingraham '548.

• Prior Art Relied Upon: Chiu (Patent 4,561,002), Schwarzbach (Patent 4,418,333), and Ingraham '548 (Patent 4,731,548).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds the teachings of Ingraham '548 to the Chiu/Schwarzbach combination. Petitioner argued that Ingraham '548 discloses a touch-controlled electronic switching circuit that includes a "voltage regulator circuit" as part of its DC power supply to ensure stable power. This was argued to render obvious claim 91, which requires the supply voltage to be a "voltage regulator supply voltage."
  • Motivation to Combine: A POSITA would be motivated to add a voltage regulator as taught by Ingraham '548 to protect the base circuit from damage or malfunction caused by unexpected variations in the supply voltage, which is a routine design consideration for electronic circuits.

Additional Grounds

Petitioner asserted additional obviousness challenges based on the Chiu and Schwarzbach combination in view of other references. These included Tucker (Patent 4,308,443) for teaching a safety-lock feature where a second input is valid only within a predetermined time after a first input (for claims 28 and 92), and Lawson (Patent 4,328,408) for teaching the use of LED indicators to provide user feedback upon touch detection (for claims 32, 36, and 93). The motivations were to add common safety and usability features.

4. Key Claim Construction Positions

• "providing signal output frequencies" (claims 27, 83): Petitioner argued this term should be construed broadly to encompass scenarios where the output frequencies are identical ("have a same hertz value," per dependent claim 85) or are selected from a plurality of different values (per dependent claim 86).
• "supply voltage" (claim 83): Petitioner contended this term means the supply voltage of the microcontroller itself, not another circuit component. This construction was supported by the term's placement in the claim and was consistent with the Board's construction in a prior IPR involving the '183 patent.
• "coupled" (claims 27, 83): Petitioner argued this term should be construed to include both direct connections and indirect connections through intervening components, consistent with examples in the ’183 patent's specification.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical contention underlying all grounds was that a person of ordinary skill in the art (POSITA) at the time of the invention would have understood the terms "microprocessor" and "microcontroller" to be used interchangeably for single-chip data processing circuits. This understanding was crucial for applying the teachings of prior art disclosing a "microprocessor" (like Chiu and Schwarzbach) to the "microcontroller" recited in the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion under 35 U.S.C. §314(a) to deny institution, despite a prior IPR filed by Samsung against the same patent. Citing the General Plastic factors, Petitioner asserted that it was not a "similarly situated" petitioner because the Patent Owner waited over two years after suing Samsung—and until after the Samsung IPR concluded—to file a suit against Apple. Petitioner claimed this delay in litigation meant Apple had no reason to conduct prior art searches or file its own petition earlier, and that denying the petition would unfairly reward the Patent Owner's litigation strategy.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 27, 28, 32, 36, 83-88, and 90-93 of the '183 patent as unpatentable.