IN THE UNITED STATES PATENT AND TRADEMARK OFFICE. For: Intelligent User Interface Including A Touch Sensor Device

Transcription

1 Petition for Inter Partes Review of USP 8,288,952 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Inter Partes Review of: ) U.S. Patent No. 8,288,952 ) Issued: Oct. 16, 2012 ) Application No.: 13/189,865 ) Filing Date: July 25, 2011 ) For: Intelligent User Interface Including A Touch Sensor Device FILED VIA PRPS PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,288,952 For ease of reference, Petitioners refer to this petition as 952 Petition challenging claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and

2 Petition for Inter Partes Review of USP 8,288,952 Table of Contents I. INTRODUCTION... 1 II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW... 1 A. Grounds for Standing (37 C.F.R (a))... 1 B. Notice of Lead and Backup Counsel and Service Information... 1 C. Notice of Real-Parties-in-Interest (37 C.F.R. 42.8(b)(1))... 2 D. Notice of Related Matters (37 C.F.R. 42.8(b)(2))... 3 E. Fee for Inter Partes Review... 3 F. Proof of Service... 3 III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ( (B))... 4 IV. DESCRIPTION OF THE PURPORTED INVENTION... 5 V. CLAIM CONSTRUCTION... 7 A. Applicable Law... 7 B. Construction of Claim Terms... 8 VI. PERSON HAVING ORDINARY SKILL IN THE ART... 9 VII. THE PRIOR ART A. Beard (Ex. 1005) B. Rathmann (Ex. 1006) C. Danielson (Ex. 1007) VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES A. Motivation to Combine Beard with Rathmann B. Motivation to Combine Beard and Rathmann with Danielson IX. PRECISE REASONS FOR THE RELIEF REQUESTED A. Ground 1: Claims 1, 2, 3, 16, 17, 19, 22, 23, 24, 26, 27, 38, 39, and 40 are invalid under 35 U.S.C. 103 on the ground that they are all rendered obvious by Beard in view of Rathmann i

3 Petition for Inter Partes Review of USP 8,288,952 B. Ground 2: Claims 4 and 14 are invalid under 35 U.S.C. 103 on the ground that they are rendered obvious by Beard in view of Rathmann and Danielson X. CONCLUSION ii

4 Petition for Inter Partes Review of USP 8,288,952 Exhibit List 1001 U.S. Patent No. 8,288,952 ( the 952 patent ) 1002 File History Excerpts for the 952 patent (June 15, 2012 Notice of Allowance; Apr. 19, 2012 Applicant Remarks; Feb. 1, 2012 Non-Final Rejection) 1003 Declaration of Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent No. 8,288, Curriculum Vitae of Paul Beard 1005 U.S. Patent No. 5,898,290, Battery Pack with Capacity and Pre-Removal Indicators, filed Sept. 6, 1996, issued Apr. 27, 1999 ( Beard ) 1006 U.S. Patent No. 5,955,869, Battery Pack And A Method For Monitoring Remaining Capacity Of A Battery Pack, filed July 9, 1997, issued Sept. 21, 1999 ( Rathmann ) 1007 U.S. Patent No. 5,710,728, Portable Work Station-Type Data Collection System, filed June 7, issued Jan. 20, 1998 ( Danielson ) Sony WM-701C Service Manual Sony WM-DDIII Service Manual 1010 Tandy Pocket Scientific Computer PC-6 Service Manual Tandy Computer Catalog 1012 U.S. Patent No. 4,818, U.S. Patent No. 5,747, U.S. Patent No. 5,743, U.S. Patent No. 5,294, Apr. 21, 1994 Press Release, Duracell and Intel Announce Smart Battery Specifications for Portable Computers 1017 Mar. 2, 1995 EDN Access Article, Smart-Battery Technology: Power Management s Missing Link iii

5 Petition for Inter Partes Review of USP 8,288, Oct. 2, 1995 Infoworld Article, New Battery Technologies Mix Brains and Chemistry 1019 Jan. 24, 1995 PC Magazine Article, Batteries That Think 1020 PMBus Webpage, PMBus Ancestry: PMBus and the Technologies Preceding It 1021 Feb. 15, 1995 Smart Battery Data Specification, Version July 2003 Microchip Technology s Microsolutions enewsletter 1023 USPTO, Rathmann Assignment Details Moody s Industrial Manual, Duracell International Inc Duracell Form 10-K 1026 P&G 2014 Annual Report 1027 U.S. Patent No. 5,710, U.S. Patent No. 5,652, U.S. Patent No. 5,606, Load Definition, The IEEE Standard Dictionary of Electrical and Electronics Terms 593 (6th ed. 1996) iv

6 I. INTRODUCTION Apple Inc. and Motorola Mobility LLC ( Petitioners ), in accordance with 35 U.S.C. 311 and 37 C.F.R , hereby request inter partes review of claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and of United States Patent No. 8,288,952, titled Intelligent User Interface Including a Touch Sensor Device (the 952 patent ). According to USPTO records, the 952 patent is assigned to Global Touch Solutions, LLC ( Global Touch ). A copy of the 952 patent is provided as Ex. 1001, and excerpts of its prosecution history as Ex II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW A. Grounds for Standing (37 C.F.R (a)) Petitioners certify that the 952 patent is available for inter partes review and that Petitioners are not barred or estopped from requesting inter partes review of the challenged claims of the 952 patent on the grounds identified herein. B. Notice of Lead and Backup Counsel and Service Information Pursuant to 37 C.F.R. 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioners provide the following designation of Lead and Back-Up counsel. LEAD COUNSEL Robert Steinberg (Reg. No. 33,144) (bob.steinberg@lw.com) Postal & Hand-Delivery Address: Latham & Watkins LLP 355 South Grand Avenue BACKUP COUNSEL Matthew J. Moore (Reg. No. 42,012) (matthew.moore@lw.com) Latham & Watkins LLP 555 Eleventh Street, NW, Ste Washington, D.C

7 Los Angeles, CA T: , F: BACKUP COUNSEL Gabriel S. Gross (Reg. No. 52,973) Latham & Watkins LLP 140 Scott Drive Menlo Park, CA T: ; F: BACKUP COUNSEL DeAnna Allen (Reg. No. 46,516) Cooley LLP 1299 Pennsylvania Ave., NW, Ste. 700 Washington, D.C T: ; F: T: , F: BACKUP COUNSEL Phillip E. Morton (Reg. No. 57,835) Cooley LLP 1299 Pennsylvania Ave., NW, Ste. 700 Washington, D.C T: ; F: BACKUP COUNSEL Joseph M. Drayton (PHV to be filed) Cooley LLP 1299 Pennsylvania Ave., NW, Ste. 700 Washington, D.C T: ; F: Pursuant to 37 C.F.R (b), a Power of Attorney for each of the Petitioners is attached. C. Notice of Real-Parties-in-Interest (37 C.F.R. 42.8(b)(1)) The real-parties-in-interest are Apple Inc. and Motorola Mobility LLC. Petitioner Motorola Mobility LLC is indirectly a wholly-owned subsidiary of Lenovo Group Limited, which has more than a ten percent ownership of Motorola Mobility LLC. No other parties exercised or could have exercised control over this petition; no other parties funded or directed this petition. (See Office Patent Trial Practice 2

8 Guide, 77 Fed. Reg ) D. Notice of Related Matters (37 C.F.R. 42.8(b)(2)) Global Touch Solutions, LLC v. Apple Inc., 2:14-cv-390-MSD (E.D. Va.). Global Touch Solutions, LLC. v. Motorola Mobility LLC, 2:14-cv-391-MSD (E.D. Va.). Global Touch Solutions, LLC. v. Microsoft Corp., 3:14-cv-548-MSD (E.D. Va.). Global Touch Solutions, LLC. v. VIZIO, Inc., 2:14-cv-347-MSD (E.D. Va.). Global Touch Solutions, LLC. v. Toshiba Corp., 2:14-cv-346-MSD (E.D. Va.). Petition for Inter Partes Review of U.S. Patent No. 7,329,970, IPR (to be filed concurrently). Petition for Inter Partes Review of U.S. Patent No. 7,498,749, IPR (to be filed concurrently). Petition for Inter Partes Review of U.S. Patent No. 7,781,980, IPR (to be filed concurrently). Petition for Inter Partes Review of U.S. Patent No. 7,994,726, IPR (to be filed concurrently). According to USPTO records, the following patents claim priority to the 952 patent: U.S. Patent No. 8,531,120 and U.S. Patent No. 8,823,273. E. Fee for Inter Partes Review The Director is authorized to charge the fee specified by 37 C.F.R (a) to Deposit Account No F. Proof of Service Proof of service of this petition on the patent owner at the correspondence address of record for the 952 patent is attached. 3

9 III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ( (B)) Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and of the 952 patent (the challenged claims ) are unpatentable in view of the following prior art. United States Patent No. 5,898,290, to Beard and Grabon, entitled Battery Pack with Capacity and Pre-Removal Indicators, filed with the USPTO on September 6, 1996, issued April 27, 1999 ( Beard, attached as Ex. 1005); U.S. Patent No. 5,955,869 to Rathmann, entitled Battery Pack And A Method For Monitoring Remaining Capacity Of A Battery Pack, filed with the USPTO on July 9, 1997, issued on September 21, 1999 ( Rathmann attached as Ex. 1006); U.S. Patent No. 5,710,728 to Danielson et al., entitled Portable Work Station-Type Data Collection System, filed with the USPTO on June 7, issued on January 20, 1998 ( Danielson, attached as Ex. 1007); Specifically, the challenged claims are invalid under 35 U.S.C. 103 on the following grounds: Ground 1: Claims 1-3, 16, 17, 19, 22-24, 26, 27, and are invalid on the ground that they are rendered obvious by Beard in view of Rathmann. Ground 2: Claims 4 and 14 are invalid on the ground that they are rendered obvious by Beard in view of Rathmann and Danielson. 4

10 IV. DESCRIPTION OF THE PURPORTED INVENTION Conventional flashlights use mechanically-operated switches to turn a flashlight on and off. 952 patent at 1: These switches do not automatically turn a flashlight off when the switch is accidentally left in the on position, which can lead to unnecessary battery drainage and corrosion. Id. at 2:5-12. They are also subject to wear and tear from repeated use. Id. at 3: Mechanical switches also act as conductors to complete the power circuit that operates the device. Id. at 3: This current is generally high, which leads to switch failure over time. Id. at 3: And mechanical switches are dumb in the sense that they cannot provide any enhanced functionality other than activating the device. Id. at 3: The alleged invention of the 952 patent purports to solve these problems by using a microchip-controlled switch that manages both current-conducting and user-interface functions in an electronic device such as a flashlight without the switch itself conducting current to the load. 952 patent at 3:61-66; Declaration of Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent 8,288,952 ( Beard Decl. ) at 60. The switch operates on a low-current signal to reduce switch corrosion and may be a touch sensor. 952 patent at 3:66-4:4; Beard Decl. at 60. It also can be used by the microchip to control the functions of the device in an intelligent manner. 952 patent at 4:5-8; Beard Decl. at 60. The microchip 5

11 can provide additional functionality such as power-saving features like automatic shut-off after a predetermined interval. 952 patent at 4:12-19; Beard Decl. at 60. The microchip-controlled switch can be its own device. 952 patent at 4:63-5:5; Beard Decl. at 61. Or it may be embedded in an intelligent battery for use with an electronic device. 952 patent at 4:47-63; Beard Decl. at 61. As depicted below in Figure 11, a visible indicator such as a light emitting diode (LED) can be used to indicate the battery condition. 952 patent at 9:46-54; Beard Decl. at 62. The indicator 1104 may be activated by either microchip 1113 or switch patent at 9:54-56 and FIG. 11; Beard Decl. at 62. LED 1104 shines when microchip 1113 pulls the line 1114 to high. 952 patent at 9:54-55 and FIG. 11; Beard Decl. at 62. LED 1104 also shines when switch 1111 is closed by the user. 952 patent at 9:55-56 and FIG. 11; Beard Decl. at 62. The examiner initially rejected all pending claims in the application for the 952 patent on the basis of non-statutory obviousness-type double patenting. Beard Decl. at 64. The applicant filed a terminal disclaimer, which the examiner approved. Id. at 65. The examiner then issued a notice of allowance. Id. The examiner never rejected the pending claims as anticipated or obvious in view of 6

12 third-party prior art. Id. at 65. V. CLAIM CONSTRUCTION 1 A. Applicable Law In deciding whether to institute inter partes review, [a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears C.F.R (b). Any ambiguity regarding the broadest reasonable construction of a claim term is resolved in favor of the broader construction absent amendment by the patent owner. Final Rule, 77 Fed. Reg , (Aug. 14, 2012). [T]he specification is always highly 1 Petitioners expressly reserve the right to challenge one or more claims (and claim terms) of the 952 patent for failure to satisfy the requirements of 35 U.S.C. 112, which cannot be raised in these proceedings. See 35 U.S.C. 311(b). Nothing in this Petition, or the constructions provided herein, shall be construed as a waiver of such challenge, or agreement that the requirements of 35 U.S.C. 112 are met with for any claim of the 952 patent. 2 The district court, in contrast, affords a claim term its ordinary and customary meaning... to a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Petitioners expressly reserve the right to argue different or additional claim construction positions under this standard in district court. 7

13 relevant to the claim construction analysis. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citation and quotation marks omitted). Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Id. When the specification includes a disclaimer, such revealed intention is dispositive. See id. at B. Construction of Claim Terms All claim terms not specifically addressed in this section have been accorded their broadest reasonable interpretation as understood by one of ordinary skill in the art and consistent with the specification of the 952 patent. Petitioners respectfully submit that the following terms should be construed for this IPR: 1. energy consuming load The term energy consuming load is used in challenged independent claims 1 and 26. Beard Decl. at 114. A POSITA would have generally understood energy consuming load, as used in the claims of the 952 patent, to have its plain and ordinary meaning. Id. at 115. A POSITA would have understood this plain and ordinary meaning to be any part of the product that consumes energy when the product is used. Id. at 116. The 952 patent specification uses the term consistent with this meaning. Id. It identifies the load in two embodiments of the alleged invention: a flashlight, where the load is the bulb, and in the context of a wall switch, where the load is the ener- 8

14 gy-consuming element the switch controls, like a light, fan, [or] air conditioner. 952 patent 7:2-4, 11:45. Each of these loads are parts of the product that consume energy when the product is used. Beard Decl. at 116. The contemporaneous IEEE Standard Dictionary of Electrical and Electronics Terms, which defines the term load as [a]n energy consuming device or [a] power consuming device connected to a circuit, supports this construction. Beard Decl. at 117. Thus the broadest reasonable construction of the term energy consuming load is, consistent its plain and ordinary meaning, any part of the product that consumes energy when the product is used. Beard Decl. at 118. This petition relies on the plain and ordinary meaning of the term energy consuming load and does not depend on this exact articulation of that meaning. Id. at 119. VI. PERSON HAVING ORDINARY SKILL IN THE ART The purported invention of the 952 patent reflects an understanding of several basic principles of electronics and electrical engineering as they apply to product design, and knowledge of industry practices in 1998 including the use of signal switches and the use of microchips as control circuitry for switches and batteries. Beard Decl. at 51. A person of ordinary skill in the art ( POSITA ) with this knowledge and understanding thus has: a Ph.D. in electrical or electronics engineering; or a Masters-level degree in electrical or electronics engineering and 9

15 1 year of experience designing portable, battery-powered electronic devices controlled by microprocessors that used touch sensors or other signal switches; or a Bachelors-level degree in electrical or electronics engineering and 2 years of experience designing such devices. Id. at 52. This description is approximate, and a higher level of education or skill might make up for less experience, and viceversa. Id. VII. THE PRIOR ART A. Beard (Ex. 1005) U.S. Patent No. 5,898,290 ( Beard ), entitled Battery Pack with Capacity and Pre-Removal Indicators, issued to Paul Beard and Robert Grabon and was assigned to Norand Corporation. Beard Decl. at 67. Beard is prior art to the 952 patent under at least 35 U.S.C. 102(e) because the application that led to Beard was filed with the USPTO on September 6, Id. Beard was not before the USPTO during prosecution of the 952 patent. Id. Beard is directed to an intelligent battery pack with a microcontroller (microchip) and battery indicators for use with a portable electronic device. See, e.g., Beard at 1:18-21; Beard Decl. at 43, 68. The microcontroller responds to a touch-sensing circuit that detects changes in impedance or capacitance when an operator touches two contacts. See, e.g., Beard at 11:12-16; Beard Decl. at 68. Portable devices of that era suffered from several common battery-related 10

16 problems. Beard Decl. at 70. First, the devices did not allow a user to check battery power levels without turning on the device, which led to data loss from the device if battery charge levels were dangerously low. See, e.g., Beard at 1:44-49; Beard Decl. at 70; see also Beard Decl. at Second, data loss also resulted if users did not complete the time-consuming shut down process. See, e.g., Beard at 2:26-28; Beard Decl. at 70. Beard discloses user interface changes to resolve both problems. Beard Decl. at 71; see also Beard Decl. at First, it provided a user-activated indication of battery capacity that worked without turning on the device. This feature prevented system problems arising from the unexpected loss of power during device startup, because the user could verify that the battery charge was sufficient before turning on the device. See, e.g., Beard at 11:10-12; Beard Decl. at 71. And it worked whether or not the battery pack was inserted into the device, because the battery pack could retrieve charge status information either from the device, or from its own memory. See, e.g., Beard at 11:33-40; Beard Decl. at The touch-activated indication of battery capacity also included time estimates of remaining battery life based on the loading characteristics of the device using the battery. See, e.g., Beard at 11:41-45, 11:58; Beard Decl. at 75. The battery pack initially monitors the device to determine these power-consumption 11

17 characteristics. See, e.g., Beard at 11:57-61; Beard Decl. at 76. The battery pack then stores them in its memory and retrieves them to calculate and display remaining battery life in response to a request, via touch sensor, from the operator. See, e.g., Beard at 11:23-30; Beard Decl. at 74, 76. Beard teaches and discloses, among other things, the activation of a visual indication of battery capacity in response to user input detected by a touch sensor that functions regardless of whether or not the battery pack has been inserted into the device, and without turning on the device. Beard Decl. at 77. Beard s battery pack indicator is activated without affecting the load of the device and without requiring that the user has activated the load of the device. Id. Second, Beard added pre-removal circuitry that allowed a user to gracefully deactivate and activate a device merely by removing or inserting the battery, respectively. This circuitry prevented data loss arising from the unexpected loss of power during operation. See Beard Decl. at 71. Beard accomplishes this goal by including a sense contact between the device and battery pack, in addition to the ground and voltage contacts that connect battery power to the device. See, e.g., Beard at 11:63-67; Beard Decl. at 78. When a user removes the battery pack from the device, the connection between sense contacts breaks first. See, e.g., Beard at 12:4-6; Beard Decl. at 79. In response to that first break, removal-sensing circuitry causes a control circuit to 12

18 save the operational status and any pending data in the device and complete removal processing and deactivation of the device before the ground and voltage contacts break and the device loses power. See, e.g., Beard at 12:8-13; Beard Decl. at 79. When the user reinserts the pack, the control circuit retrieves the saved operational state and data and resumes normal operation of the device. See, e.g., Beard at 12:19-22; Beard Decl. at 80. Thus, Beard discloses deactivating and activating a device in response to the user s removal and re-insertion of the device s battery pack. Beard Decl. at 79. B. Rathmann (Ex. 1006) The prior art U.S. Patent No. 5,955,869 to Rathmann ( Rathmann ) entitled Battery Pack And A Method For Monitoring Remaining Capacity Of A Battery Pack, was originally assigned to Duracell, Inc. Rathmann (cover sheet); Beard Decl. at 82. Duracell is a leading manufacturer of high-performance alkaline and rechargeable batteries, and has a tradition of innovation in battery development and smart power systems. Beard Decl. at 82. Rathmann is prior art to the 952 patent under at least 35 U.S.C. 102(e) because it issued from a divisional application of U.S. Patent App. No. 08/890,665, which was filed with the USPTO on July 9, Id. Rathmann was not before the USPTO during prosecution of the 952 patent. Id. Rathmann discloses a smart battery for use in an intelligent device having 13

19 power management capabilities, Rathmann at 1:12-16; 1:65-3:30, like the 952 patent s intelligent battery for use with an electronic device and intelligent current switching devices. 952 patent at 1:44-46, 4:57-58; Beard Decl. at 85. The battery pack includes a microcontroller, battery-power indicator, and userinterface switch, broadly similar to those disclosed by Beard and the 952 patent. See, e.g., Rathmann at Abstract, 1:51-56, 1:65-2:2, 3:1-7, 24:21-23; Beard Decl. at 83, 86. The microchip in Rathmann is a CMOS 8-bit microcontroller sold in the U.S. by Microchip Technology, Inc. with an advanced RISC architecture, and optimizations for low power consumption, just like the microchip in Beard. See, e.g., Rathmann at 16:57-17:5; Beard Decl. at 86. Rathmann s indicator is comprised of LEDs, which are also disclosed as an indicator in Beard. See, e.g., Beard at 4: In response to a signal from battery pack s user interface, four LEDs illuminate sequentially to indicate remaining battery charge. See, e.g., Rathmann at FIG. 3, 16:24-36; Beard Decl. at 87. And like the touch sensors of Beard the 952 patent, the manual switch of Rathmann does not act as a conductor to complete the power circuit to power the load. See, e.g., Rathmann at FIG. 3 (showing that there is no power circuit connected to switch 35); Beard Decl. at 87. But Rathmann differs from Beard by disclosing in more detail how the 14

20 microchip is adapted to control the operation of the battery pack and indicator using software. Beard Decl. at 88. In particular, Rathmann discloses the Duracell Battery Operating System (DBOS) for intelligent battery packs, which is designed as an operating system for Smart Battery System (SBS) battery packs, a standard Duracell developed with Intel in See, e.g., Rathmann at 5:47-48, 13:64-67; Beard Decl. at 84. Rathmann provides step-by-step instructions for many smart battery functions, including how the microchip implements illumination of the correct number of LEDs based on battery charge. See, e.g., Rathmann at FIG. 34 ( IX.A.1, infra), 58:31-59:32; Beard Decl. at Rathmann describes displaying the appropriate number of LED lights to indicate remaining battery charge without requesting information from, or otherwise affecting, the operation of the load. See, e.g., Rathmann at 58:31-59:32; Beard Decl. at 90. Rathmann discloses using the battery pack s microchip to estimate battery capacity and storing the device s power consumption characteristics in battery memory, rather than device memory. See, e.g., Rathmann at 24:24-33; Beard Decl. at 90. A user thus may press the switch to determine the state of charge in the battery even when the battery has been removed from the host device 16. See, e.g., Rathmann at 16:26-29; Beard Decl. at 91. Rathmann thus discloses the activation of a visual indicator of battery capacity in response to user input that functions regardless of whether or not the battery 15

21 pack is inserted into the device, and without turning on the device. C. Danielson (Ex. 1007) The prior art U.S. Patent No. 5,710,728 to Danielson et al., entitled Portable Work Station-Type Data Collection System, another patent that relates to Mr. Beard s work, also was assigned to Norand Corporation. Beard Decl. at 93. Mr. Beard is co-inventor of the Danielson patent. Id. Danielson is prior art to the 952 patent under at least 35 U.S.C. 102(a) and 102(e) because it was filed with the USPTO on June 7, 1995 and issued on January 20, Id. Danielson was not before the USPTO during prosecution of the 952 patent. Id. Both Danielson and Beard relate to Norand s Pen*Key TM technology. Id. at 94. Danielson s invention is a portable electronic terminal for data entry that is powered by the intelligent battery pack disclosed in Beard. See, e.g., Danielson, FIG. 2 (depicting the underside of data terminal device 10, including battery door 41); Beard, FIG. 11 (depicting portable electronic device 203 powered by intelligent battery pack 201); Beard Decl. at 94. Danielson additionally describes various aspects of such terminal devices, including embodiments that have audio and radio frequency circuitry, a keyboard, or an on/off switch. See, e.g., Danielson at 8:55-57, 22:58-60, 22:65-66; Beard Decl. at 92. VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES The obviousness inquiry takes an expansive and flexible approach to de- 16

22 termine the scope and content of the prior art, differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 407, 415 (2007). It considers interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. A person of ordinary skill is also a person of ordinary creativity, not an automaton. Id. at 421. Thus a patent is obvious when it simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, as long as there is reason to combine the elements. Id. at For instance, [c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Similarly, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. A. Motivation to Combine Beard with Rathmann A POSITA would have been strongly motivated to combine the teachings of 17

23 Beard with Rathmann because both patents are directed to the same problem enabling the user of a portable battery-pack to readily determine the current state of battery charge. Beard Decl. at A POSITA would have looked to their complementary disclosures to achieve their combined advantages. Beard and Rathmann solve the same problem: readily determining and indicating remaining battery charge status information to a user of a portable device powered by a battery pack. Beard Decl. at 96. Beard primarily focuses on the hardware aspects of the solution and some of the software aspects, while Rathmann primarily describes a software operating system for intelligent batteries, the Duracell Battery Operating System, that is used with a variety of different hardware options and devices. Id. Beard and Rathmann use very similar hardware structures to solve their 3 See, e.g., Beard at 2:29-31 ( Thus, there lies a need for the operator of a portable battery powered electronic device to be able to readily determine the present state of charge of a battery pack. ); Rathmann at 1:45-48 ( However, there is a need for a rechargeable power unit that will accurately maintain its own state of charge information even when nominally fully discharged such that a user will have instantaneous access thereof. ); Beard Decl. at

24 common problem. Both references describe a battery pack. 4 Both describe a user interface on the battery pack to allow the user to check the battery status. 5 Both describe LEDs on the battery pack that light up to display the remaining battery capacity. 6 And both references describe a local memory in the battery pack to store 4 See, e.g., Beard at 1:18-21 ( The present invention relates generally to battery packs utilized in portable batter powered electronic devices. ); Rathmann at Abstract ( A battery pack and a method of monitoring remaining capacity of a battery pack. ); Beard Decl. at See, e.g., Beard at 11:12-16 ( To initiate the display of battery capacity, an operator touches a pair of contacts 211 and 213. A touch sensing circuit 221 detects the resultant impedance change across the contacts 211 and 213, and activates a control circuit 223 to service the request. ); Rathmann at 16:21-28 ( The smart battery module 28 includes a hybrid IC 32 containing a microprocessor 50 and a manually actuable switch 35 which may be manually actuated by an end user to determine the state of charge in the battery. ); Beard Decl. at See, e.g., Beard at 4:63-67 ( In an exemplary embodiment of the present invention, the battery indicator display is a linear array of four light-emitting diodes which sequentially illuminate in accordance with the capacity of the rechargeable battery pack 10. ); Rathmann at 12:12-14 ( A press of the switch will activate all the LEDs corresponding to the current battery State-Of-Charge (SOC) for ap- 19

25 battery capacity information. 7 This use of local memory within the battery pack allows both systems to avoid affecting the host device when determining remaining capacity. Beard Decl. at 99. Finally, both references describe the same type of microprocessor used to control the process: an 8-bit, CMOS, Reduced-Instruction- Set-CPU (RISC) based microcontroller sold by Microchip Technology, Inc. 8 A person of ordinary skill seeking to implement Beard s intelligent battery pack would necessarily need to program the microchip to communicate with and control other components, including the batteries, the visible indicator, and the touch sensor. Rathmann specifies in more detail than Beard the microchip control programming software used to operate the pack and activate the battery indicator. Beard Decl. at 101. Because Beard and Rathmann disclose the same kind of microprocessor controller, a POSITA would have understood that these systems are compatible. Id. It would have been a natural fit to implement the control software and algorithms disclosed in Rathmann with the Beard hardware that used proximately 3 to 5 seconds. ); Beard Decl. at See Beard at 11:23-24, FIG. 11; Rathmann at 22:18-26, FIG. 3; Beard Decl. at See, e.g., Beard at 7:44-48; supra VII.A (describing an 8-bit RISC Microchip microcontroller); Rathmann, 16:57-17:5; supra VII.B (describing an 8-bit RISC Microchip microcontroller); Beard Decl. at 73, 86,

26 the same type of microprocessor. Id. Beard discloses that [m]icroprocessor 64 may be programmed with a routine that determines the present capacity of the battery pack based on the present battery voltage. Beard at 8: Rathmann correspondingly describes in more detail routines that do just this: for example, Rathmann s FIGS. 17 through 39 illustrate respectively the following logic flow diagrams or routines which are particularly well suited for battery packs, including routines relating to calculating battery capacity and indicating it to a user. Rathmann at 35:45-55, FIGs ; Beard Decl. at 102. Rathmann teaches and describes processes and algorithms that comprise the Duracell Battery Operating System (DBOS), See, e.g., Rathmann at 5:47-13:47 (DBOS overview); Beard Decl. at 103. It specifies how the microprocessor should be adapted to implement key algorithms and provides detailed algorithms for the main logic flow for a lithium ion battery, the calculation of remaining battery capacity, and the activation of a visual indication of battery capacity in response to user input. See, e.g., Rathmann at FIG. 17, 35:56-38:34 (main logic flow); FIG. 22, 42:15-44:53 (capacity calculation); FIG. 34, 58:31-59:32 (activation of a visual indication in response to user input); Beard Decl. at 103. A POSITA would have naturally looked to implement the algorithms described in Rathmann with the Beard hardware because the references address a similar 21

27 problem, solve the problem in a similar way, and describe similar hardware structures in the solution including the same microprocessors. Beard Decl. at 103. In addition, a POSITA would have been motivated by practical considerations to look to combine Beard with Rathmann. Id. at 104. Rathmann describes the operating system for smart battery packs used with portable devices, which was being advanced by leaders in the field, Duracell and Intel. Id. A POSITA would have understood that using Rathmann s operating system and battery pack algorithms with the hardware described in Beard would have resulted in a more efficient development process and quicker time to market. Id. Since Rathmann describes the operational details of an SBS implementation, see, e.g., Rathmann at 13:64-67 (citing to a portion of the SBS specification for a detailed functional description of part of the disclosed system), the combination also would have allowed the battery pack to be used with a variety of host devices because the standard provides compatibility with any SBS-compatible host device. Beard Decl. at As discussed above in VII.B, SBS was an industry standard jointly developed by Intel and Duracell, among others designed to facilitate and standardize the creation of smart batteries that determined remaining capacity without affecting the host device. See supra VII.B; Beard Decl. at 47-50,

28 As further motivation, a POSITA would have understood that using the operating system described in Rathmann, and thereby complying with the SBS standard, would have provided many advantages, including a larger market opportunity due to interoperability with standards-compliant host devices, lower development costs, and faster time to market. Beard Decl. at 105. B. Motivation to Combine Beard and Rathmann with Danielson Likewise, a POSITA would be highly motivated to combine Beard and Rathmann with Danielson. Beard Decl. at 106. Beard and Rathmann disclose the hardware, software, and operation of intelligent battery packs with capacity indicators, but do not describe in detail the host products that use these intelligent battery packs, or how the host products interact with the battery packs. Id. A POSITA would naturally seek to examine the application of intelligent battery packs to host products. Id. at 107. Beard discloses that its battery system is preferably utilized in portable data terminals in wireless networks. See, e.g., Beard at 4:35-38 ( The portable data terminal in which the battery pack 10 of FIG. 1 is preferably utilized may be itself utilized with mobile computing systems, inpremise wireless local and wide area networks ); Beard Decl. at 107. Danielson discloses such an improved portable, hand-held data collection terminal[] and explicitly references an actual device line, Norand s Pen*Key TM devices. Danielson at 3:46-52; see, e.g., id. at 1: The Pen*Key TM devices were 23

29 commercialized portable data terminals for use with the intelligent battery pack described in Beard. Beard Decl. at 107. And in combination with Beard, Danielson provides more detail about how the Beard battery pack would be incorporated into a portable data terminal. Id. at 108. As discussed above in VIII.A, a POSITA would have been motivated by both technical and business reasons to combine the smart battery pack hardware described in Beard with the smart battery pack software and operating system described in Rathmann. Beard Decl. at A POSITA would have naturally looked to combine this smart battery pack with the portable data terminal described in Danielson, because the Danielson device was specifically designed to work with the complementary Beard smart battery pack. Id. at 108. A POSITA would have been further motivated to combine the smart battery pack with Danielson s device, because the Danielson host device was created at Norand, the same company that created the Beard smart battery pack; Danielson provides a real-world example of a perfectly compatible host device for use with the pack (the Pen*Key TM devices); and Danielson and Beard share a common inventor (Mr. Beard). See Black v. CE Soir Lingerie Co., Inc., No , 2008 WL , at *14 (E.D. Tex. Aug. 15, 2008) (finding a motivation to combine where prior art references were patented by the same inventor and deal with remarkably similar subject matter ); Beard Decl. at 109. And because Beard and Rathmann share hardware and 24

30 functionality, including the same type of microprocessor, a POSITA would have understood that the device described in Beard that implemented the software and algorithms of Rathmann would be easily used in the host device described in Danielson. Beard Decl. at 109. Danielson provides more explicit and helpful detail about the interaction between the host device and the smart battery pack to complement the combination of Beard and Rathmann. Id. at 110. For example, Beard discloses that when a user restores power to a device by re-inserting the battery pack into the device, the device s previously saved operational state is restored. See, e.g., Beard at 12:19-25; Beard Decl. at 110. And Rathmann discloses the initial step of that process by providing schematics for a power on reset circuit that shows how to reset the processor after power is restored. See, e.g., Rathmann at FIG. 10, 30:60-63 ( FIG. 11 [10] schematically shows a power on reset circuit 85 that is used to generate a reset impulse signal to initiate operation of the processor when power is applied to the processing module. ); Beard Decl. at 110. But neither Beard nor Rathmann provide specific details on the additional steps required to activate the device and restore its previous state. See, e.g., Beard at 12:19-25; Beard Decl. at 110. Although Danielson lacks the battery pack disclosure of Beard and the power on reset circuit of Rathmann, Danielson provides specific instructions on the activation steps to be performed after a processor reset, including information on required 25

31 system and memory checks, and how state is restored. See, e.g., Danielson at FIG. 22 (process flow), 23:25-24:2 (device activation); Beard Decl. at 110. Thus, the combination of Beard and Rathmann with Danielson explicitly discloses all the steps required to activate a device after a loss of power with Beard providing the battery pack and hardware detail, Rathmann a key operational schematic, and Danielson the actual steps to be performed on the device. Beard Decl. at 110. For all of these reasons, a POSITA at the time of the invention claimed in the 952 patent would be highly and expressly motivated to combine the teachings of Beard and Rathmann with Danielson, and obtain the additional disclosures of Danielson related to the use of products powered by intelligent battery packs, including how products leverage such battery packs to restore previously saved operational state. Id. at 111. IX. PRECISE REASONS FOR THE RELIEF REQUESTED The invention described and claimed in the 952 patent purports to save power and reduce switch failure in electronic devices using a microchip-controlled switch that manages both current-conducting and user-input functions without having the switch conduct current directly to the load. These technologies were well known and in use to solve these problems and others well before the filing date of the 952 patent. 26

32 A. Ground 1: Claims 1, 2, 3, 16, 17, 19, 22, 23, 24, 26, 27, 38, 39, and 40 are invalid under 35 U.S.C. 103 on the ground that they are all rendered obvious by Beard in view of Rathmann. 1. Claim 1 [1a] A method for implementing a user interface of a product.... The preamble of claim 1 (the opening phrase) is not limiting at least because it is duplicative of the limitations in the claim s body and does not recite any unique essential structure or steps. Beard Decl. at 120. Nor is it necessary to give life, meaning, and vitality to the claim. Id. Nonetheless, like the other limitations, it is fully disclosed by Beard. Id. Beard discloses a method for implementing a user interface of a product, such as a portable electronic device powered by a battery pack, using the alleged invention of the 952 patent. Id. at 129. The 952 patent relates to microchip controlled electrical current switching devices, including an intelligent battery for use with an electronic device. 952 patent at 1:44-46, 4: Beard similarly discloses an invention that relates generally to battery packs utilized in portable battery powered electronic devices, and, specifically, [to] battery packs which monitor capacity, including by using a Microchip PIC 16C71 microcontroller. Beard at 1:18-21, 7:46-47; Beard Decl. at 121. Beard further discloses a method for implementing a user interface of this product, for example, by touching contacts to receive a visible indication of the 27

33 state of the product s battery. See Beard at Abstract; Beard Decl. at 122. Beard discloses another example of a user interfacing with the product by removing the battery. See, e.g., Beard at 11:63-65; 12:4-13; Beard Decl. at 122. When the signal-sensing circuitry detects that the user has begun to remove the battery, the device saves data and performs essential shutdown tasks before battery power is lost. See, e.g., Beard at 12:4-8; Beard Decl. at 122. Similarly, inserting a battery signals the device to load the previously saved information. See, e.g., Beard at 12:19-22; Beard Decl. at 122. [1b] the product comprising a power source, or a connection for a power source and at least one energy consuming load Beard discloses claim element [1b]. Beard Decl. at 123. Beard discloses that the product comprises a power source. Id. at 124. Figure 11 (below) depicts a battery pack 201 that powers portable electronic device 203; the power source is the batteries, labeled 231. See, e.g., Beard at 11:10-12, 11:24-26; Beard Decl. at 124. Beard also discloses a connection for a power source. Beard Decl. at 125. It discloses electrical connections that connect the power source (battery pack 201 containing batteries 231) to the energy consuming load (any energy consuming part of device 203). See, e.g., Beard at 11:67-12:4 (describing battery pack contacts 241, 243 and 245 [that] engage the corresponding contacts 251, 253 and 255 ); Beard Decl. at

34 Beard further discloses that the product comprises an energy consuming load. Beard Decl. at 126. It discloses that the battery pack delivers electric charge energy to a portable electronic device 203, which includes the exemplary energy consuming components depicted in device 203 in Figure 11. See, e.g., Beard at 11:57-61, FIG. 11; Beard Decl. at 126. Such portable electronic devices with loads are further disclosed throughout the Beard specification See, e.g., Beard at FIG. 5 (portable data terminal 58), FIG. 8 (portable terminal 101); Beard Decl. at 126. [1c] said method including the step of using an electronic module comprising an electronic circuit including a microchip and a touch sensor forming part of the user interface, said microchip at least partially implementing the touch sensor functions and... Beard also discloses the step of using an electronic module comprising an electronic circuit including a microchip and a touch sensor that form part of a user 29

35 interface where the microchip at least partially implements the touch sensor functions. Beard Decl. at 127. Beard discloses using an electronic module comprising an electronic circuit. It discloses using battery pack 201 of Figure 11 which is an electronic module comprising electronic circuitry. See, e.g., Beard at FIG. 11, 4:20-24; Beard Decl. at 128. Beard discloses that the electronic circuit includes a microchip and a touch sensor. Beard Decl. at 129. The battery back includes a microchip control circuit 223. Beard teaches that this control circuit can be a specific type of microchip, a Microchip PIC 16C71 microcontroller. See, e.g., Beard at 7:44-48, FIG. 7; Beard Decl. at 129. And the battery pack module 201 includes a touch sensor, including touch sensing circuitry 221 and touch contacts 211 and 213. See, e.g., Beard at FIG. 11; Beard Decl. at 129. Beard discloses that the touch sensor may alternatively comprise a single touch contact. See, e.g., Beard at 11:17-19, FIG. 9 at item 155 (single touch contact); Beard Decl. at 129. Beard discloses a touch sensor that senses touch as an impedance change across the contacts, Beard at 11:14-16, and, alternatively, a touch sensor that senses the change in capacitance caused by a touch, see, e.g., id. at 11: Both types of touch sensor rely on the conductivity of the operator s finger to send an input command. Beard Decl. at 129. The microchip and touch sensor are both part an electric circuit. See, e.g., 30

36 Beard at 11:12-22 ( To initiate the display of battery capacity, an operator touches a pair of contacts 211 and 213. A touch sensing circuit 221 detects the resultant impedance change across the contacts 211 and 213, and activates a control circuit 223 [microchip] to service the request. [C]ontrol circuit 223 responds to the request by delivering charge status information to the operator via a display 225. ); Beard Decl. at 130. The microchip 223 and the touch-sensing circuit 221 are directly connected within the circuit. See, e.g., Beard at FIG. 11; Beard Decl. at 130. And Beard discloses that the electronic circuit includes a microchip and touch sensor forming part of a user interface for the operator. See, e.g., Beard at 11:12-22; Beard Decl. at 131. Beard discloses that the microchip at least partially implements the touch sensor functions by controlling the display of charge status information upon detecting user input, a request, through the touch sensor. See, e.g., Beard at 11:14-22 ( A touch sensing circuit 221 detects the resultant impedance change across the contacts 211 and 213, and activates a control circuit 223 to service the request.... [T]he control circuit 223 responds to the request by delivering charge status information to the operator via a display. ); see also id. at 11:31-33 ( The control circuit 223 manipulates the charge status information into an appropriate form for viewing via the display 225. ); Beard Decl. at

37 Finally, Beard discloses the step of using this electronic module by touching the contacts. See, e.g., Beard at 11:12-22; Beard Decl. at 133. [1d] said method including the step of activating a visible indication in response to an activation signal received from the user interface, wherein the visible indication provides information to a user on at least one item from the following group: a state or condition of the product, location of the user interface, a battery power level indication. Claim element [1d] is disclosed by Beard in view of Rathmann. Beard Decl. at 134. First, Beard discloses the step of activating a visible indication (that provides battery power information) in response to an activation signal received from the user interface. See, e.g., Beard at 7:44-48; Beard Decl. at 72-73, 135. For example, the user activates the visible indication by touching a pair of contacts 211 and 213. See, e.g., Beard at 11:12-14; Beard Decl. at 135. The indication is displayed on a visual display 225 by microchip 223 in response to an activation signal received from the user interface (i.e., an activation signal from the user touching the touch sensor). See, e.g., Beard at 11:14-22, 11:31-33; Beard Decl. at 135. The displayed information includes the amount of charge stored by batteries 231 when they are fully charged, and the used amount of such charge. Beard at 11:24-26; Beard Decl. at 135. Second, Beard discloses a visible indication wherein the indication provides information on a state or condition of the product. Beard Decl. at 136. The battery power level is a state or condition of the product, so the visible indicator of 32

38 battery power, described above, satisfies this limitation. Id. Charge status information includes the amount of total charge that has been used, thus showing the current state or condition of the product s battery pack. See, e.g., Beard at 11:24-26; Beard Decl. at 136. This can be seen in the fuel gauge type display depicted in element 111 of Figure 8, below, or in the battery capacity indicating LEDs depicted in element 14 of Figure 6, also below: In addition, Beard discloses that when the battery pack is inserted into a portable electronic device, the pack identifies time estimates for remaining battery life that are based on measurements of peak, minimum, and maximum loading. See, e.g., Beard at 11:40-45; Beard Decl. at 137. Beard further discloses that a visible indication of these time estimates may be displayed in response to the activation signal received from the user interface. See, e.g., Beard at 11:44-47 ( Instead of (or in addition) displaying the percentage of available battery 33