IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Inter Partes Review of: ) U.S. Patent No. 7,329,970 ) Issued: Feb. 12, 2008 ) Application No.: 11/480,868 ) Filing Date: July 6, 2006 ) For: Touch Sensor And Location Indicator Circuits FILED VIA PRPS PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,329,970 For ease of reference, Petitioners refer to this petition as 970 Petition challenging claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52.

2 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))... 3 D. Notice of Related Matters (37 C.F.R. 42.8(b)(2))... 3 E. Fee for Inter Partes Review... 4 F. Proof of Service... 4 III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ( (B))... 4 IV. DESCRIPTION OF THE PURPORTED INVENTION... 4 V. CLAIM CONSTRUCTION... 7 A. Applicable Law... 7 B. Construction of Claim Terms... 8 VI. PERSON HAVING ORDINARY SKILL IN THE ART 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 i

3 IX. PRECISE REASONS FOR THE RELIEF REQUESTED A. Ground 1: Claims 1, 3, 5, 10, 11, 12, 14, 19, 48, and 49 are invalid under 35 U.S.C. 103 on the ground that they are rendered obvious by Beard in view of Rathmann B. Ground 2: Claims 4, 13, 51, and 52 are invalid under 35 U.S.C. 103 on the ground that they are all rendered obvious by Beard in view of Rathmann and Danielson X. CONCLUSION ii

4 Exhibit List 1001 U.S. Patent No. 7,329,970 ( the 970 patent ) 1002 File History Excerpts for the 970 patent (Oct. 9, 2007 Notice of Allowance; Sept. 11, 2007 Applicant Remarks; July 9, 2007 Notice of Allowance; Apr. 18, 2007 Applicant Remarks; Mar. 28, 2007 Non-Final Rejection) 1003 Declaration of Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent No. 7,329, 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 ) 1008 Mains Definition, Collins English Dictionary, available at: Sony WM-701C Service Manual Sony WM-DDIII Service Manual 1011 Tandy Pocket Scientific Computer PC-6 Service Manual Tandy Computer Catalog 1013 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 Bat- iii

5 tery Specifications for Portable Computers 1018 Mar. 2, 1995 EDN Access Article, Smart-Battery Technology: Power Management s Missing Link 1019 Oct. 2, 1995 Infoworld Article, New Battery Technologies Mix Brains and Chemistry 1020 Jan. 24, 1995 PC Magazine Article, Batteries That Think 1021 PMBus Webpage, PMBus Ancestry: PMBus and the Technologies Preceding It 1022 Feb. 15, 1995 Smart Battery Data Specification, Version July 2003 Microchip Technology s Microsolutions enewsletter 1024 USPTO, Rathmann Assignment Details Moody s Industrial Manual, Duracell International Inc Duracell Form 10-K 1027 P&G 2014 Annual Report 1028 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) 1032 Mains Definition, Newton s Telecom Dictionary 434 (1998) 1033 L.A. Meyer & H.L. Wray, Basics of Electricity 18 (1995) iv

6 I. INTRODUCTION Apple Inc., Motorola Mobility LLC, and Toshiba America Information Systems, Inc. ( Petitioners ), in accordance with 35 U.S.C. 311 and 37 C.F.R , hereby request inter partes review of claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of United States Patent No. 7,329,970, titled Touch Sensor and Location Indicator Circuits (the 970 patent ). According to USPTO records, the 970 patent is assigned to Global Touch Solutions, LLC ( Global Touch ). A copy of the 970 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 970 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 970 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 BACKUP COUNSEL Matthew J. Moore (Reg. No. 42,012) (matthew.moore@lw.com) Latham & Watkins LLP 555 Eleventh Street, NW, Ste

7 355 South Grand Avenue 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: BACKUP COUNSEL Doris Johnson Hines (Reg. No. 34,629) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Ave., NW Washington, D.C T: ; F: Washington, D.C 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: BACKUP COUNSEL Luke McCammon (Reg. No. 70,691) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Ave., NW Washington, D.C T: ; F: Pursuant to 37 C.F.R (b), a Power of Attorney for each of the Petitioners is attached. 2

8 C. Notice of Real-Parties-in-Interest (37 C.F.R. 42.8(b)(1)) The real-parties-in-interest are Apple Inc., Motorola Mobility LLC, Toshiba Corp., and Toshiba America Information Systems, Inc. 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 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. Toshiba Corp., 2:14-cv-346-MSD (E.D. Va.). Global Touch Solutions, LLC. v. VIZIO, Inc., 2:14-cv-347-MSD (E.D. Va.). 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). Petition for Inter Partes Review of U.S. Patent No. 8,288,952, IPR (to be filed concurrently). According to USPTO records, According to USPTO records, 3

9 no patent claims priority to the 970 patent. 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 970 patent is attached. III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ( (B)) Claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of the 970 patent (the challenged claims ) are unpatentable in view of the following prior art. U.S. Patent No. 5,898,290 ( Beard, attached as Ex. 1005); U.S. Patent No. 5,955,869 ( Rathmann attached as Ex. 1006); U.S. Patent No. 5,710,728 ( Danielson, attached as Ex. 1007); The challenged claims are invalid under 35 U.S.C. 103 on these grounds: Ground 1: Claims 1, 3, 5, 10-12, 14, 19, 48, and 49 are invalid on the ground that they are rendered obvious by Beard in view of Rathmann. Ground 2: Claims 4, 13, 51, and 52 are invalid on the ground that they are rendered obvious by Beard in view of Rathmann and Danielson. IV. DESCRIPTION OF THE PURPORTED INVENTION Conventional flashlights use mechanically-operated switches to turn a 4

10 flashlight on and off. 970 patent at 1: These switches do not automatically turn a flashlight off when the switch is left in the on position, which can lead to battery drainage and corrosion. Id. at 1: They are also subject to wear and tear from repeated use. Id. at 2:62-3:2. Mechanical switches 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 that they cannot provide any enhanced functionality other than activating the device. Id. at 3:5-9. The alleged invention of the 970 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. 970 patent at 3:41-46; Declaration of Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent 7,329,970 ( Beard Decl. ) at 60. The switch operates on a low-current signal and may be a touch sensor. 970 patent at 3:46-49; Beard Decl. at 60. It also can be used by the microchip to control the functions of the device in an intelligent manner. 970 patent at 3:53-56; Beard Decl. at 60. The microchip can provide additional functionality such as power-saving features like automatic shut-off after a predetermined interval. 970 patent at 3:60-67; Beard Decl. at 60. The microchip-controlled switch can be its own device. 970 patent at 4:44-5

11 54; Beard Decl. at 61. Or it may be embedded in an intelligent battery for use with an electronic device. 970 patent at 4:28-44; Beard Decl. at 61. As depicted in Figure 11, a visible indicator such as a light emitting diode (LED) can be used to indicate the condition of the battery. 970 patent at 9:47-55; Beard Decl. at 62. The indicator 1104 may be activated by either microchip 1113 or switch patent at 9:55-57 and FIG. 11; Beard Decl. at 62. LED 1104 shines when microchip 1113 pulls the line 1114 to high. 970 patent at 9:55-56 and FIG. 11; Beard Decl. at 62. LED 1104 also shines when switch 1111 is closed by the user. 970 patent at 9:56-57 and FIG. 11; Beard Decl. at 62. The examiner initially rejected all pending claims in the application for the 970 patent on the basis of non-statutory obviousness-type double patenting. Beard Decl. at 66. The applicant filed a terminal disclaimer and, at the same time, amended challenged claims 1 and 52 to clarify the language regarding the switch not forming a serial link between the power source and the load. Ex at 4/18/07 Applicant Remarks at 8 ( 970 File History Excerpts). The examiner approved the terminal disclaimer and issued a notice of allowance. Beard Decl. at 67. The applicant amended the allowed claims. Changes to challenged claim 1 included: (1) adding the text that is not the load to mak[e] sure that the indicator is not construed as the load ; (2) defining the indicator as luminous and visible (such as an LED) by replacing the phrase location indicator with visible 6

12 indicator ; and (3) adding a touch sensor limitation. Ex at 9/11/07 Applicant Remarks at 10; Beard Decl. at 68. The applicant amended other claims to specify that the switch is activated for a short period of time (claim 5); to designate that the disclosed switch is structurally integral with the product, for example with the casing of a flashlight (claim 10); to remove the direct current power source limitation (claim 19); to specify that certain components are enclosed in or attached to the panel housing (challenged claim 49); and to add a touch sensor limitation and clarifying language (challenged claim 52). Id. at 10-11; Beard Decl. at 68. The examiner allowed the claims as amended. Beard Decl. at 68. The examiner never rejected the claims as anticipated or obvious in view of third-party prior art. Id. at 70. 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 speci- 1 Petitioners reserve the right to challenge one or more claims of the 970 patent for failure to satisfy the requirements of 35 U.S.C. 112, which cannot be raised in these proceedings. 35 U.S.C. 311(b). Nothing in this Petition shall be construed as a waiver of such challenge. 7

13 fication 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 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 970 patent. Petitioners respectfully submit that the following terms should be construed for this IPR: 1. energy consuming load 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. 8

14 The term energy consuming load is used in challenged independent claims 1 and 52. Beard Decl. at 118. A POSITA would have generally understood energy consuming load, as used in the claims of the 970 patent, to have its plain and ordinary meaning. Id. at 119. 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 120. The 970 patent specification uses the term consistent with this meaning. Id. It identifies the load in two embodiments: a flashlight, where the load is the bulb, and in the context of a wall switch, where the load is the energy-consuming element the switch controls, like a light, fan, [or] air conditioner. 970 patent at 6:54-55; 11: Each of these loads are parts of the product that consume energy when the product is used. Beard Decl. at 120. 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 121. Thus the broadest reasonable construction of the term energy consuming load is, consistent with the term s plain and ordinary meaning, any part of the product that consumes energy when the product is used. Beard Decl. at 122. This petition relies on the plain and ordinary meaning of the term and does not depend on this exact articulation. Id. at mains 9

15 The term mains is used in challenged independent claim 1 in the phrase, the product is not connected to a mains supply. See 970 patent at claim 1. The specification of the 970 patent does not use the term mains. Beard Decl. at 125. But a POSITA would have understood the term mains in the context of the claims to refer to the power provided by a main utility distribution network, similar to a water main or a gas main, as opposed to power supplied by a small exhaustible power source such as a battery. Id. This construction follows from the distinction drawn in the specification between an electronic device, such as a flashlight which is battery-operated, and a switch on the wall that runs on mains power. Compare, e.g., 970 patent at 3:41-4:53, 6:31-9:34 with 4:54-63, 11: This understanding of mains is also the common understanding of the word in many countries of the British Commonwealth. Beard Decl. at 126. It is exemplified by a contemporaneous dictionary definitions of the term, as well, which define mains as normal commercial power outlets and relating to a main distribution network for water, gas, or electricity. Beard Decl. at The broadest reasonable construction of the term mains thus includes the power source provided by a main distribution network, such as a utility. Id. at 128. VI. PERSON HAVING ORDINARY SKILL IN THE ART The purported invention of the 970 patent reflects an understanding of several basic principles of electronics and electrical engineering as they apply to prod- 10

16 uct 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 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 71. Beard is prior art to the 970 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 970 patent. Id. Beard is directed to an intelligent battery pack with a microcontroller 11

17 (microchip) and battery indicators for use with a portable electronic device. See, e.g., Beard at 1:18-21; Beard Decl. at 72. The microchip responds to a touchsensing 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 72. Portable devices of that era suffered from several common battery-related problems. Beard Decl. at 74. 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 74; see also Beard Decl. at Second, data loss also resulted if users did not complete the time-consuming shut down process. Beard at 2:26-28; Beard Decl. at 74. Beard discloses user interface changes to resolve both problems. Beard Decl. at 22-31, 75. 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 26-28, 75. 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

18 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 79. The battery pack initially monitors the device to determine these power-consumption characteristics. See, e.g., Beard at 11:57-61; Beard Decl. at 80. 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 80; see also Beard Decl. at 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 81. 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 29-30, 75. 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 13

19 battery power to the device. See, e.g., Beard at 11:63-67; Beard Decl. at 82. When a user removes the battery pack, the connection between sense contacts breaks first. See, e.g., Beard at 12:4-6; Beard Decl. at 83. In response to that first break, removal-sensing circuitry causes a control circuit to 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 83. 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 84. Thus, Beard discloses deactivating and activating a device in response to the user s removal and re-insertion, respectively, of the device s battery pack. Beard Decl. at 85. 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 86. 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 86. Rathmann is prior art to the 970 patent under at least 35 U.S.C. 102(e) because it issued from a divisional application of 14

20 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 970 patent. Id. Rathmann discloses a smart battery for use in an intelligent device having power management capabilities, Rathmann at 1:12-16; 1:65-3:30, just like the 970 patent s intelligent battery for use with an electronic device and intelligent current switching devices. 970 patent at 1:18-19, 4:38-39; Beard Decl. at 89. The battery pack in Rathmann includes a microcontroller, battery-power indicator, and user-interface switch, similar to those disclosed by Beard and the 970 patent. See, e.g., Rathmann at Abstract, 1:51-56, 1:65-2:2, 3:1-7, 24:21-23; Beard Decl. at 87, 90. 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., Beard at 16:57-17:5; Beard Decl. at 90. Rathmann s indicator is comprised of LEDs, which are also disclosed as an indicator in Beard. See, e.g., Beard at 4:63-66, 6:67-7:5. 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 91. And like the touch sensors of Beard and the 970 patent, the manual switch of Rathmann does not act as a 15

21 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 91. But Rathmann differs from Beard by disclosing in more detail how the microchip is adapted to control the operation of the battery pack and indicator using software. Beard Decl. at 92. 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 88. 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 LED lights to indicate 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 94. 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 80, 94. A user may press the switch to determine the state of charge in the battery even when the battery has 16

22 been removed from the host device 16. Rathmann at 16:26-29; Beard Decl. at 95. 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 pack is inserted into the device, and without turning on the device. C. Danielson (Ex. 1007) 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 97. Mr. Beard is a co-inventor. Id. Danielson is prior art to the 970 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 970 patent. Id. Both Danielson and Beard relate to Norand s Pen*Key TM technology. Id. at 98. 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 at FIG. 2 (depicting the underside of data terminal device 10, including battery door 41); Beard at FIG. 11 (depicting portable electronic device 203 powered by intelligent battery pack 201); Beard Decl. at 98. 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 17

23 at 8:55-57, 22:58-60, 22:65-66; Beard Decl. at 98, 220. VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES The obviousness inquiry takes an expansive and flexible approach to determine 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 18

24 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 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 100. 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. 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

25 Beard and Rathmann use very similar hardware structures to solve their common problem. Both 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 references describe LEDs on the battery pack that light up to display the remaining battery capacity. 6 And both describe a local memory in the battery pack to store battery ca- 4 See, e.g., Beard at 1:18-21 ( The present invention relates generally to battery packs.... ); 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- 20

26 pacity 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 103. 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 105. Because Beard and Rathmann disclose the same kind of microprocessor controller, a POSITA would have understood that these systems are compatible. Id. at It would have been a natural fit to implement the control software and algorithms disclosed in Rathmann with the Beard hardware proximately 3 to 5 seconds. ); Beard Decl. at See, e.g., 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 (discussing an 8-bit RISC Microchip microcontroller); Rathmann, 16:57-17:5; supra VII.B (discussing an 8-bit RISC Microchip microcontroller); Beard Decl. at 77, 90,

27 that used the same type of microprocessor. Id. at 105. 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 106. Rathmann provides describes in detail processes and algorithms that comprise the Duracell Battery Operating System (DBOS), See, e.g., Rathmann at 5:47-13:48 (DBOS overview); Beard Decl. at 107. 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 107. A POSITA would have naturally looked to implement the algorithms described in Rathmann with the Beard hardware because the references address a 22

28 similar problem, solve the problem in a similar way, and describe similar hardware structures in the solution including the same microprocessors. Beard Decl. at 107. In addition, a POSITA would have been motivated by practical considerations to look to combine Beard with Rathmann. Id. at 108. 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 108. 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 VII.B; Beard Decl. at 47-49, 109. As further motivation, a POSITA would have understood that using the 23

29 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 109. 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 110. 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 111. 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 111. 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 commercialized portable data terminals for use with the intelligent battery pack 24

30 described in Beard. Beard Decl. at 111. 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 112. 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 112. 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 113. And because Beard and Rathmann share hardware and functionality, including the same type of 25

31 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 113. 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 114. 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 114. 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 114. 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 114. 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 system and memory checks, and how state is restored. See, e.g., Danielson at FIG. 26

32 22 (process flow), 23:25-24:2 (device activation); Beard Decl. at 114. 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 114. For all of these reasons, a POSITA at the time of the invention claimed in the 970 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 115. IX. PRECISE REASONS FOR THE RELIEF REQUESTED The invention described and claimed in the 970 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 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 970 patent. 27

33 A. Ground 1: Claims 1, 3, 5, 10, 11, 12, 14, 19, 48, and 49 are invalid under 35 U.S.C. 103 on the ground that they are rendered obvious by Beard in view of Rathmann. 1. Claim 1 [1a] An electronic module for use with a product comprising The preamble of claim 1 the language up to and including the phrase a product comprising 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 129. Nor is it necessary to give life, meaning, and vitality to the claim. Nonetheless, it is fully disclosed by Beard. Id. Beard discloses an electronic module for use with a product, such as a portable electronic device powered by a battery pack. Id. at 130. The 970 patent relates to microchip controlled electrical current switching devices, including an intelligent battery for use with an electronic device. 970 patent at 1:18-19, 4: Beard similarly discloses an electronic module for use with a product: the invention 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: [1b] an energy consuming load and a power source or a connection to a power source, said module comprising a microchip, and a switch;... Beard discloses claim element [1b]. Beard Decl. at 131. First, Beard discloses that the product comprises an energy consuming load. Id. at , 28

34 132. Beard discloses an embodiment in which the battery pack delivers electric charge energy to a portable electronic device 203, which includes a load, such as any of the exemplary energy consuming components in device 203. See, e.g., Beard at 11:57-61; FIG. 11; Beard Decl. at 132. Such portable electronic devices with loads are depicted and described throughout the Beard specification. See, e.g., Beard at FIG. 5, FIG. 8; Beard Decl. at 132. Second, Beard discloses that the product comprises a power source. Beard Decl. at 133. Figure 11 of Beard (below) depicts a battery pack 201 that powers portable electronic device 203. See, e.g., Beard at 11:10-12; Beard Decl. at 133. Specifically, Beard discloses that the power source is the set of batteries, labeled 231, in the battery pack, which store and deliver electric charge. See, e.g., Beard at 11:24-26; Beard Decl. at 133. Beard also discloses connections for a power source. Beard Decl. at 134. It 29

35 discloses electrical connections that connect the power source (battery pack 201 containing batteries 231) to the energy consuming load (energy consuming parts of portable electronic device 203). See, e.g., Beard at 11:67-12:4 ( When fully inserted, the battery pack contacts 241, 243 and 245 engage the corresponding contacts 251, 253 and 255. ); Beard Decl. at 134. Third, Beard further discloses a microchip (in the form of control circuit 223), and a switch, namely a touch sensor switch (including touch sensing circuitry 221 and touch contacts 211 and 213), that are part of the battery pack 201. See, e.g., Beard at FIG. 11 at item 223, 221, 211, 213; Beard Decl. at 135. Beard also discloses that the microchip can be a specific type of microchip, a Microchip PIC 16C71 microcontroller. See, e.g., Beard at FIG. 7, 7:44-48; Beard Decl. at 135. It discloses that the touch sensor may comprise dual contacts 211 and 213 or 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 135. [1c] said switch being a user interface and does not form a serial link in a circuit that transfers power from the power source to power the load, and... Beard discloses claim element [1c]. Beard Decl. at 136. Beard discloses the touch sensor switch, which (as described above) is a part of the user interface comprised of touch sensing circuitry 221 and touch contacts 211 and 213. See, e.g., Beard at 11:12-22 ( To initiate the display of battery capacity, an operator touches 30

36 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 135, 137. Beard discloses that when an operator touches both contacts 211 and 213, the touch sensing circuitry 221 detects an impedance change across the contacts and activates the control circuit to service the request. Beard at 11: This impedance change across the contacts occurs because the operator s touch closes the circuit, decreasing the impedance of the circuit because the current flows through the operator s fingers. Beard Decl. at 138. Beard alternatively discloses that a single touch sensor might be used in a capacitive sensing arrangement. Beard at 11: The single touch sensor senses a change in capacitance resulting from the touch of the operator s electrically conductive finger. Beard Decl. at 138. Both types of touch sensor described in Beard rely on the conductivity of the operator s finger to send a command, rather than to deliver power from the power source. Id. Beard discloses that the switch does not form a serial link in a circuit that transfers power from the power source to power the load. Id. at 139. As shown in Figure 11, touch sensing circuitry 221 and touch contacts 211 and 213 do not form 31

37 a serial link in a circuit that transfers power from the batteries 231 to power the load (any energy consuming part of device 203). See, e.g., Beard at FIG. 11; Beard Decl. at 139. Rather, Beard discloses a circuit that transfers power between batteries 231 and the load via battery contacts 241 and 243 and device contacts 251 and 253. See, e.g., Beard at 11:63-65; Beard Decl. at 140. These contacts provide a direct connection between the battery and the device. Beard Decl. at 140. The touch sensing circuitry is not a part of that connection. Id. The touch sensor switch does not form a link, serial or otherwise, in a circuit that transfers power from the power source to power the load. Id. [1d] said microchip controlling a luminous visible location indicator that is not the load... Beard and Rathmann disclose claim element [1d]. Beard Decl. at 141. Beard discloses an embodiment with a luminous visible location indicator in the form of an LED. See, e.g., Beard at FIGs. 5-6, 6:67-7:5; Beard Decl. at 142. To a POSITA, and to a layperson, the illumination of the LEDs as described in Beard would indicate not only the remaining battery capacity, but also the location of the device containing the visible LEDs. Beard Decl. at 142. Beard also discloses that the indicator is not the load. Beard teaches that the LED display is on the battery pack and is distinct and separate from the energy consuming parts of the device that are the load. See, e.g., Beard at 6:45-7:3 ( FIG. 6 illustrates exemplary operation of the present invention showing the operation of 32