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Petition for Inter Partes Review of USP 7,329,970
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” challeng-
ing claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52.
Petition for Inter Partes Review of USP 7,329,970
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Table of Contents
I. INTRODUCTION ........................................................................................... 1
II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW .......... 1
A. Grounds for Standing (37 C.F.R. § 42.104(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 (§ 42.104(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 ............................. 10
VII. THE PRIOR ART .......................................................................................... 11
A. Beard (Ex. 1005) ................................................................................. 11
B. Rathmann (Ex. 1006) .......................................................................... 14
C. Danielson (Ex. 1007) ........................................................................... 17
VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES ......... 18
A. Motivation to Combine Beard with Rathmann ................................... 19
B. Motivation to Combine Beard and Rathmann with Danielson ........... 24
Petition for Inter Partes Review of USP 7,329,970
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IX. PRECISE REASONS FOR THE RELIEF REQUESTED ........................... 27
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. .............................. 28
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 ................................................... 46
X. CONCLUSION .............................................................................................. 59
Petition for Inter Partes Review of USP 7,329,970
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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 Allow-ance; Sept. 11, 2007 Applicant Remarks; July 9, 2007 Notice of Allow-ance; Apr. 18, 2007 Applicant Remarks; Mar. 28, 2007 Non-Final Rejec-tion)
1003 Declaration of Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent No. 7,329,970
1004 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, 1995. issued Jan. 20, 1998 (“Danielson”)
1008 Mains Definition, Collins English Dictionary, available at: http://www.collinsdictionary.com/dictionary/english/mains
1009 1989 Sony WM-701C Service Manual
1010 1987 Sony WM-DDIII Service Manual
1011 Tandy Pocket Scientific Computer PC-6 Service Manual
1012 1987 Tandy Computer Catalog
1013 U.S. Patent No. 4,818,827
1014 U.S. Patent No. 5,747,757
1015 U.S. Patent No. 5,743,386
1016 U.S. Patent No. 5,294,762
1017 Apr. 21, 1994 Press Release, “Duracell and Intel Announce ‘Smart Bat-
Petition for Inter Partes Review of USP 7,329,970
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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 Pre-ceding It”
1022 Feb. 15, 1995 Smart Battery Data Specification, Version 1.0
1023 July 2003 Microchip Technology’s Microsolutions eNewsletter
1024 USPTO, Rathmann Assignment Details
1025 1997 Moody’s Industrial Manual, “Duracell International Inc.”
1026 1996 Duracell Form 10-K
1027 P&G 2014 Annual Report
1028 U.S. Patent No. 5,710,501
1029 U.S. Patent No. 5,652,502
1030 U.S. Patent No. 5,606,242
1031 Load Definition, The IEEE Standard Dictionary of Electrical and Elec-tronics 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)
Petition for Inter Partes Review of USP 7,329,970
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I. INTRODUCTION
Apple Inc., Motorola Mobility LLC, and Toshiba America Information Sys-
tems, Inc. (“Petitioners”), in accordance with 35 U.S.C. § 311 and 37 C.F.R.
§ 42.100, 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 pa-
tent 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.
1002.
II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW
A. Grounds for Standing (37 C.F.R. § 42.104(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 BACKUP COUNSEL Robert Steinberg (Reg. No. 33,144)
Postal & Hand-Delivery Address:
Latham & Watkins LLP
Matthew J. Moore (Reg. No. 42,012)
Latham & Watkins LLP
555 Eleventh Street, NW, Ste. 1000
Petition for Inter Partes Review of USP 7,329,970
2
355 South Grand Avenue
Los Angeles, CA 90071-1560
T: 213-485-1234, F: 213-891-8763
Washington, D.C. 20004-1304
T: 202-637-2278, F: 202-637-2201
BACKUP COUNSEL BACKUP COUNSEL Gabriel S. Gross (Reg. No. 52,973)
Latham & Watkins LLP
140 Scott Drive
Menlo Park, CA 94065
T: 650-463-2628; F: 650-463-2600
Phillip E. Morton (Reg. No. 57,835)
Cooley LLP
1299 Pennsylvania Ave., NW, Ste. 700
Washington, D.C. 20004
T: 703-456-8668; F: 703-456-8100
BACKUP COUNSEL BACKUP COUNSEL DeAnna Allen (Reg. No. 46,516)
Cooley LLP
1299 Pennsylvania Ave., NW, Ste. 700
Washington, D.C. 20004
T: 202-842-7896; F: 202-842-7899
Joseph M. Drayton (PHV to be filed)
Cooley LLP
1299 Pennsylvania Ave., NW, Ste. 700
Washington, D.C. 20004
T: 212-479-6539; F: 212-849-6275
BACKUP COUNSEL 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. 20001
T: 202-408-4250; F: 202-408-4400
Luke McCammon (Reg. No. 70,691)
Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P.
901 New York Ave., NW
Washington, D.C. 20001
T: 202-408-4273; F: 202-408-4400
Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for each of the Petitioners is
attached.
Petition for Inter Partes Review of USP 7,329,970
3
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 Mobili-
ty 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.
48759-60.)
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, IPR2015-01172 (to
be filed concurrently). Petition for Inter Partes Review of U.S. Patent No.
7,781,980, IPR2015-01174 (to be filed concurrently). Petition for Inter Partes Re-
view of U.S. Patent No. 7,994,726, IPR2015-01171 (to be filed concurrently). Peti-
tion for Inter Partes Review of U.S. Patent No. 8,288,952, IPR2015-01175 (to be
filed concurrently). According to USPTO records, According to USPTO records,
Petition for Inter Partes Review of USP 7,329,970
4
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.
§ 42.15(a) to Deposit Account No. 506269.
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 (§ 42.104(B))
Claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of the ’970 patent (the “chal-
lenged 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
Petition for Inter Partes Review of USP 7,329,970
5
flashlight “on” and “off.” ’970 patent at 1:40-41. 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 1:46-53. 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 3:11-13.
This current is generally high, which leads to switch failure over time. Id. at 3:13-
17. 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-
Petition for Inter Partes Review of USP 7,329,970
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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 1111. ’970 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. 1002 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
Petition for Inter Partes Review of USP 7,329,970
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indicator”; and (3) adding a touch sensor limitation. Ex. 1002 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 CONSTRUCTION1
A. Applicable Law
In deciding whether to institute inter partes review, “[a] claim in an unex-
pired 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.
Petition for Inter Partes Review of USP 7,329,970
8
fication of the patent in which it appears.” 2 37 C.F.R. § 42.100(b). Any ambiguity
regarding the “broadest reasonable construction” of a claim term is resolved in fa-
vor of the broader construction absent amendment by the patent owner. Final Rule,
77 Fed. Reg. 48680, 48699 (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 dis-
positive; 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 1316.
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 respect-
fully 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 in-
vention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Petitioners
expressly reserve the right to argue different or additional claim construction posi-
tions under this standard in district court.
Petition for Inter Partes Review of USP 7,329,970
9
The term “energy consuming load” is used in challenged independent claims
1 and 52. Beard Decl. at ¶ 118. A POSITA would have generally understood “en-
ergy 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 ener-
gy-consuming element the switch controls, like a “light, fan, [or] air conditioner.”
’970 patent at 6:54-55; 11:52-53. Each of these loads are parts of the product that
consume energy when the product is used. Beard Decl. at ¶ 120. The contempora-
neous IEEE Standard Dictionary of Electrical and Electronics Terms, which de-
fines 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 de-
pend on this exact articulation. Id. at ¶ 123.
2. “mains”
Petition for Inter Partes Review of USP 7,329,970
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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, 11:24-48.
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 ¶¶ 126-27. 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 sev-
eral basic principles of electronics and electrical engineering as they apply to prod-
Petition for Inter Partes Review of USP 7,329,970
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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 engi-
neering; or a Masters-level degree in electrical or electronics engineering and
1 year of experience designing portable, battery-powered electronic devices con-
trolled by microprocessors that used touch sensors or other signal switches; or a
Bachelors-level degree in electrical or electronics engineering and 2 years of expe-
rience 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 vice-
versa. 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, 1996. 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
Petition for Inter Partes Review of USP 7,329,970
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(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 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 ¶ 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 ¶¶ 26-28. 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 ¶ 78.
Petition for Inter Partes Review of USP 7,329,970
13
The touch-activated indication of battery capacity also included time esti-
mates 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 bat-
tery 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 remain-
ing 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 ¶¶ 26-28.
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 re-
quiring 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
Petition for Inter Partes Review of USP 7,329,970
14
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
Petition for Inter Partes Review of USP 7,329,970
15
U.S. Patent App. No. 08/890,665, which was filed with the USPTO on July 9,
1997. 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
Petition for Inter Partes Review of USP 7,329,970
16
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 1994. 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 ¶¶ 92-93.
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
Petition for Inter Partes Review of USP 7,329,970
17
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, 1998. Id. Danielson was not before the USPTO during
prosecution of the ’970 patent. Id.
Both Danielson and Beard relate to Norand’s Pen*KeyTM 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
Petition for Inter Partes Review of USP 7,329,970
18
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 de-
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 pre-
sent in the marketplace; and the background knowledge possessed by a person hav-
ing 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 is-
sue.” 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 417-18. For instance, “[c]ombining
two embodiments disclosed adjacent to each other in a prior art patent does not re-
quire 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
Petition for Inter Partes Review of USP 7,329,970
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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 ¶ 99.3 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 in-
formation even when nominally fully discharged such that a user will have instan-
taneous access thereof.”); Beard Decl. at ¶ 99.
Petition for Inter Partes Review of USP 7,329,970
20
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 de-
scribe LEDs on the battery pack that light up to display the remaining battery ca-
pacity.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 ¶ 101.
5 See, e.g., Beard at 11:12-16 (“To initiate the display of battery capacity, an oper-
ator 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 ¶ 101.
6 See, e.g., Beard at 4:63-67 (“In an exemplary embodiment of the present inven-
tion, 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-
Petition for Inter Partes Review of USP 7,329,970
21
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 micropro-
cessor 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 ¶¶ 104-05. 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 ¶ 102.
7 See, e.g., Beard at 11:23-24, FIG. 11; Rathmann at 22:18-26, FIG. 3; Beard Decl.
at ¶ 103.
8 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, 104.
Petition for Inter Partes Review of USP 7,329,970
22
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 8:34-36. 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. 17-39; 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
Petition for Inter Partes Review of USP 7,329,970
23
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
Petition for Inter Partes Review of USP 7,329,970
24
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, in-
premise 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*KeyTM devices.
Danielson at 3:46-52; see, e.g., id. at 1:51-55. The Pen*KeyTM devices were
commercialized portable data terminals for use with the intelligent battery pack
Petition for Inter Partes Review of USP 7,329,970
25
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 ¶¶ 99-109, 112-13. 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*KeyTM devices); and Danielson and Beard share a common
inventor (Mr. Beard). See Black v. CE Soir Lingerie Co., Inc., No. 06-544, 2008
WL 3852722, 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
Petition for Inter Partes Review of USP 7,329,970
26
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 be-
tween 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 us-
er 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 pro-
cessor 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 pro-
vide specific details on the additional steps required to activate the device and re-
store its previous state. See, e.g., Beard at 12:19-25; Beard Decl. at ¶ 114. Alt-
hough 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.
Petition for Inter Partes Review of USP 7,329,970
27
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 Dan-
ielson 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 hav-
ing 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.
Petition for Inter Partes Review of USP 7,329,970
28
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 obvi-ous 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, 4:38-39. 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, 7:46-47.
[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 ¶¶ 118-23,
Petition for Inter Partes Review of USP 7,329,970
29
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
Petition for Inter Partes Review of USP 7,329,970
30
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
Petition for Inter Partes Review of USP 7,329,970
31
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 11:14-16. 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 11:17-19. 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
Petition for Inter Partes Review of USP 7,329,970
32
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
Petition for Inter Partes Review of USP 7,329,970
33
the battery indicator display. The operator of a portable electronic device such as a
data terminal that utilizes a rechargeable battery pack such as battery pack 10 may
desire to readily determine the remaining charge capacity of the battery pack 10
before insertion thereof into the electronic device. . . . The total remaining
capacity of the battery pack 10 is preferably displayed by battery capacity
indicator display 14 which preferably comprises a linear array of four light
emitting diodes.”); Beard Decl. at ¶ 143. Beard also discloses that the microchip
controls the visible indicator. See, e.g., Beard at 7:59-63, FIG. 7; Beard Decl. at ¶
144.
Beard discloses a second, adjacent embodiment where the microchip con-
trols an LCD indicator rather than an LED indicator. See, e.g., Beard at FIGs. 8-11;
Beard Decl. at ¶ 145. The LCD indicator displays battery charge status information
as well. See, e.g., Beard at 11:31-33, 11:44-47; Beard Decl. at ¶ 145. Beard dis-
closes that the microchip activates the LCD indicator in response to an activation
signal received from the user interface (at the touch sensor). See, e.g., Beard at
11:14-22; Beard Decl. at ¶ 146. Beard discloses that the LCD indicator is not the
load; the user may activate the LCD display regardless of whether the battery pack
has been inserted into the electronic device. See, e.g., Beard at 11:10-12; Beard
Decl. at ¶ 147. Because the battery pack has not been inserted into the device, it is
not powering the energy consuming parts of the device. Beard Decl. at ¶ 147. Yet
Petition for Inter Partes Review of USP 7,329,970
34
the LCD indicator is activated. Id. The LCD display therefore cannot be the load.
Id.
An LCD indicator may or may not be luminous.9 Beard Decl. at ¶ 148. But a
POSITA would be motivated to combine the indicator functionality disclosed in
the second embodiment of Figures 8-11 with the luminous LED indicator disclosed
in the first embodiment of Figures 1-6, at least because both indicators display bat-
tery charge information of data terminals, and they may be used interchangeably.
Id. A POSITA would view the use of an LED instead of an LCD as a predictable,
expected variation rather than a leap of innovation, especially since both types of
indicators are taught by Beard in adjacent embodiments and both were commonly
used in the field and well known as reliable, low-cost indicators. See Boston Scien-
tific, 554 F.3d at 991; Beard Decl. at ¶ 148. Therefore, the combination of the two
adjacent embodiments in Beard also discloses all the limitations of [1d] and was
obvious to a POSITA. Beard Decl. at ¶ 148.
Beard provides limited detail (but more than the ’970 patent) of precisely
9 Luminous backlit LCDs were well known at the time. For example, Danielson
describes a common backlit LCD. See, e.g., Danielson at 8:30-31. In addition to
the reasons described above, it would have been obvious to use a backlit LCD as a
visible location indicator that is not the load. Beard Decl. at ¶ 148 n.18.
Petition for Inter Partes Review of USP 7,329,970
35
how the microchip controls the luminous visible location indicator. Id. at ¶ 149. A
POSITA naturally would look to Rathmann for the reasons discussed in § VIII.A,
and especially because Rathmann teaches more about how the control circuitry
controls the visible indicator. See, e.g., Rathmann at 16:24-29; Beard Decl. at ¶
149. Specifically, Rathmann discloses in detail each and every step of a process
known as “LED_display” by which the microchip controls the visible indicator.
See, e.g., § VII.B; Rathmann at FIG. 34 (flowchart of steps for LED_display
routine), 58:31-59:32; Beard Decl. at ¶¶ 91-93, 150.
[1e] “according to at least one configuration selected from the following group: a) wherein the visible indicator at least indicates a condition of the product upon receiving a signal from the user interface switch, and wherein the switch is a touch sensor type switch;”
Although the prior art only needs to disclose one of the listed configurations
in the above and following claim limitations, here the prior art discloses all three.
Beard Decl. at ¶ 152. Beard discloses LEDs as a visible indicator that indicates the
condition of the product’s battery charge in response to a signal from the touch
sensor user interface switch. See, e.g., Beard at FIGs. 5-6, 6:63-7:5; Beard Decl. at
¶ 154. These LEDs thus illuminate in sequence to indicate remaining battery
capacity. See, e.g., Beard at FIG. 6 (at right); Beard
Decl. at ¶ 154.
Beard also discloses a touch sensor type switch,
Petition for Inter Partes Review of USP 7,329,970
36
including touch sensing circuitry 221 and touch contacts 211 and 213. See, e.g.,
Beard at FIG. 11 at item 223, 221, 211, 213; Beard Decl. at ¶ 155. Or the touch
sensor may comprise a single touch contact. See, e.g., Beard at 11:17-19, FIG. 9 at
item 155; Beard Decl. at ¶ 155. Beard discloses that the touch sensor switch is a
user interface switch that allows the user to interface with the product. See, e.g.,
Beard at 11:12-22; Beard Decl. at ¶ 156.
[1f] “b) wherein the visible indicator is activated at least to indicate an activation signal from the switch when the load is not activated; and”
Claim element [1f] is fully disclosed by Beard in view of Rathmann. Beard
Decl. at ¶ 157. First, Beard discloses that the visible indicator is activated at least
to indicate an activation signal from the switch (e.g., the touch sensor). See, e.g.,
Beard at 6:63-7:3, 9:19-23; Beard Decl. at ¶ 158.
Beard further teaches that the visible indicator may be activated when the
load is not activated. Beard Decl. at ¶ 159. Portable electronic device 203 includes
a load. In one embodiment, the battery pack determines the loading characteristics
by communicating with the portable electronic device via infrared communication.
See, e.g., Beard at 11:52-57; Beard Decl. at ¶¶ 80, 159. Because this requires the
device to engage in infrared communication, it requires an activated load. Beard
Decl. at ¶ 159. But in another embodiment, Beard explicitly discloses a battery
pack that displays charge status information in response to a user’s touch without
Petition for Inter Partes Review of USP 7,329,970
37
an activated load. In this embodiment, control circuit 223 (microchip) uses
previously monitored load characteristics stored in battery memory, rather
obtaining these characteristics from device 203 itself. See, e.g., Beard at 11:23-30
(“The control circuit 223 retrieves charge status information from a memory 227. .
. . Such information is generated and updated via interaction by the control circuit
223 with a monitoring circuit 229 which determines capacity by monitoring
recharging and charge delivery.”); Beard Decl. at ¶¶ 26-28, 160.
Other disclosures in Beard confirm that an activation signal from the touch
sensor switch can activate the visible indicator of battery capacity without activat-
ing the load. Beard Decl. at ¶ 161. Beard discloses that the user may activate the
battery charge status indicator regardless of whether the battery pack has been in-
serted into the electronic device. See, e.g., Beard at 11:10-12; Beard Decl. at ¶ 161.
Rathmann discloses additional detail about how the visible indicator is
activated to indicate an activation signal from the switch when the load is not
activated in its step-by-step disclosure of the LED_display process. See, e.g.,
§ VII.B; Rathmann at FIG. 34, 58:31-59:32, 16:24-29; Beard Decl. at ¶ 163. None
of these steps in the LED_display routine interacts with, requests information from,
or otherwise requires the load to be activated by the user. See, e.g., Rathmann at
58:31-59:32; Beard Decl. at ¶ 163. Instead, in accordance with the SBS Data
Specification, Rathmann discloses using the battery pack’s microchip to estimate
Petition for Inter Partes Review of USP 7,329,970
38
battery capacity. See, e.g., Rathmann at 24:24-33. Beard Decl. at ¶ 163.
[1g] “c) wherein the visible indicator is also used to indicate a power level of the power source when the load is switched off and the product is not connected to a mains supply.”
Beard discloses claim element [1g]. Beard Decl. at ¶ 165. First, Beard
discloses a visible indicator indicating a power level of the power source when the
load is switched off. Id. at ¶ 166. Beard explicitly discloses a battery pack that
displays charge status information in response to a user’s touch using previously
monitored load characteristics stored in battery memory, rather than obtaining
these characteristics from device 203 itself that is powered on or in use. See, e.g.,
Beard at 11:23-30; Beard Decl. at ¶ 166. Beard thus discloses that the energy
consuming parts of the device (load) can be switched off when the power-level
indicator is activated. Beard Decl. at ¶ 166. Other disclosures in Beard reinforce
that the visible indicator can indicate the power level when the load is switched off.
Beard discloses switching the device off by removing the battery. See, e.g., Beard
at 9:15-16, 9:39-50; 9:63-67; see also id. at 8:5; Beard Decl. at ¶ 167. Even when
the battery is not inserted into the device, Beard discloses use of the visible
indicator to indicate the power level of the batteries (the power source). See, e.g.,
Beard at 6:45-67; Beard Decl. at ¶ 170.
Rathmann discloses additional detail about how the visible indicator is used
to indicate a power level of the power source when the load is switched off. See,
Petition for Inter Partes Review of USP 7,329,970
39
e.g., Rathmann at 16:24-29 (“The module also includes a series of four (4) LEDS
34 driven by an LED drive circuit 53 and a manually actuable switch 35 which
may be manually actuated by an end user to determine the state of charge in the
battery even when the battery has been removed from the host device 16.”); see
also § VII.B; Beard Decl. at ¶ 168. As discussed in the analysis of [1f], the steps of
the LED_display routine are independent of the load, do not interact with the load,
and do not require the load to be on. See, e.g., Rathmann at 58:31-59:32, FIG. 34;
Beard Decl. at ¶¶ 163, 169. Rathmann instead discloses using the microchip to
estimate battery capacity. See, e.g., Rathmann at 24:24-33; Beard Decl. at ¶ 169.
Second, Beard discloses devices with loads that are battery-powered, not
mains-powered. See, e.g., Beard at 4:1-2; § V.B.2; Beard Decl. at ¶¶ 124-28, 171.
It therefore teaches that the product is not connected to a mains supply. Beard
Decl. at ¶ 171. Accordingly, the combination of Beard and Rathmann meets the
limitations of claim 1 and renders it obvious. Beard Decl. at ¶ 172.
2. Claim 3: “An electronic module of claim 1 wherein the configuration selected is (b) and the user interface comprises at least a touch sensor switch.”
Beard and Rathmann disclose the limitations of claim 3. Beard Decl. at ¶
173. As described above in § IX.A.1, Beard and Rathmann disclose configuration
(b) of claim 1. Id. at ¶¶ 157-64, 174. Beard also discloses a user interface that
comprises a touch sensor switch, including touch sensing circuitry 221 and touch
Petition for Inter Partes Review of USP 7,329,970
40
contacts 211 and 213. See, e.g., Beard at FIG. 11; Beard Decl. at ¶¶ 155, 175. The
touch sensor may alternatively comprise a single touch contact. See, e.g., Beard at
11:17-19, FIG. 9 at item 155; Beard Decl. at ¶ 175. Beard teaches that the user
interface comprises this touch sensor switch. See, e.g., Beard at 11:12-22; Beard
Decl. at ¶ 176. Accordingly, Beard discloses the limitations of this claim, and since
claim 3 is dependent on claim 1, the combination of Beard and Rathmann meets all
limitations of this claim and renders claim 3 obvious. Beard Decl. at ¶ 177.
3. Claim 5: “An electronic module of claim 3 wherein the location indicator is activated only for a period of time.”
Beard and Rathmann each disclose the limitations of claim 5 wherein the lo-
cation indicator is activated only for a period of time. Beard Decl. at ¶ 178. As de-
scribed in the discussion of claim 1, Beard discloses the location indicator. See,
e.g., § IX.A.1; Beard at 6:67-7:5, 7:59-63, 11:14-22, 11:32-33, 11:44-47, FIGs. 5-6
and 8-11; Beard Decl. at ¶¶ 141-48, 179. Beard further discloses activation of the
indicator only for a ten-second period of time.10 See, e.g., Beard at 10:48-50,
10:51-56; Beard Decl. at ¶ 180. Accordingly, Beard discloses the additional limita-
tions of this claim, and since claim 5 is dependent on claim 3, the combination of
10 Rathmann also discloses activating an LED location indicator only for a period
of time: “for 3 to 5 seconds.” Rathmann at 12:9-14; see, e.g., id. at 59:23-31; see
also § IX.A.1; Beard Decl. at ¶¶ 149-51, 180.
Petition for Inter Partes Review of USP 7,329,970
41
Beard and Rathmann renders claim 5 obvious. Beard Decl. at ¶ 182.
4. Claim 10: “An electronic module of claim 3 wherein the touch sensor switch user interface is implemented to be structurally integral with the product housing.”
Beard discloses the limitations of claim 10, wherein the touch sensor switch
user interface is implemented to be structurally integral with the product housing.
Beard Decl. at ¶ 183. Beard describes a product comprising a portable terminal 101
with battery pack 103 inserted into a slot in the bottom.
See, e.g., Beard at FIG. 8 (at right), 9:15-16; Beard Decl.
at ¶ 184.
The product housing includes the outer surfaces of
battery pack 103 and portable terminal 101 when battery
pack 103 is “inserted into a portable electronic device.”
Beard at 11:10-12; see, e.g. id. at FIG. 8, 4:31-33; Beard
Decl. at ¶ 185. Beard discloses that the touch sensor
switch user interface, 115 and 117, is located on the back
of the product, integrated into the product housing. Beard Decl. at ¶ 186. Thus the
touch sensor switch user interface in Beard has been implemented to be
structurally integral with the product housing. See, e.g., Beard at FIG. 8, 9:17-23;
Beard Decl. at ¶ 186. Accordingly, Beard discloses the requirements of this claim
and since claim 10 depends on claim 3, the combination of Beard and Rathmann
Petition for Inter Partes Review of USP 7,329,970
42
renders claim 10 obvious. Beard Decl. at ¶ 187.
5. Claim 11: “An electronic module of claim 10 wherein the location indicator also indicates a condition of the product.”
Beard discloses the limitations of claim 11. Beard Decl. at ¶ 188. Beard
discloses LEDs that indicate both the location of the product and the condition of
the battery charge. See, e.g., Beard at FIGs. 5-6, 6:63-7:5; Beard Decl. at ¶ 189.
These LEDs illuminate in sequence which indicates location of the product and
remaining battery capacity. See, e.g., Beard at FIG. 6 (§ IX.A.1); Beard Decl. at ¶
189. Accordingly, Beard discloses the additional limitations of this claim, and
since claim 11 is dependent on claim 10, the combination of Beard and Rathmann
meets all limitations of this claim and renders claim 11 obvious. Beard Decl. at ¶
190.
6. Claim 12: “An electronic module of claim 10 wherein a function, selected by a user interface activation signal is automatically shut off after a predetermined period of time.”
Beard discloses automatically shutting off a function selected by a user acti-
vation signal after a predetermined period of time. Beard Decl. at ¶ 191. Beard dis-
closes that the battery pack displays remaining battery capacity, as well as remain-
ing time estimates regarding remaining battery life. See, e.g., Beard at 6:67-7:5,
10:37-40; Beard Decl. at ¶ 192. The display of remaining battery capacity and time
estimates are each a “function” as described in the claim. Beard Decl. at ¶ 192.
Petition for Inter Partes Review of USP 7,329,970
43
Beard discloses that these display functions are selected by a user interface activa-
tion signal (from the touch sensor). See, e.g., Beard at 6:63-7:5, 11:12-22; Beard
Decl. at ¶ 193. Beard discloses an electronic module where the user interface acti-
vation signal is automatically shut off after a predetermined, ten-second period of
time. See, e.g., Beard at 10:48-50, 10:51-56; Beard Decl. at ¶ 195; see also note 9,
supra. Accordingly, Beard discloses the limitations of this claim, and since claim
12 is dependent on claim 10, the combination of Beard and Rathmann satisfies the
requirements of this claim and renders it obvious. Beard Decl. at ¶ 196.
7. Claim 14: “An electronic module of claim 10 wherein the power source is a direct current source.”
Beard discloses an electronic module wherein the power source is a direct
current source. Beard Decl. at ¶ 197. Beard discloses electrochemical cells, which
are a conventional direct current source, as the power source in the battery pack.
See, e.g., Beard at 5:9-12; Beard Decl. at ¶ 198. Accordingly, Beard and discloses
the requirements of this claim and since claim 14 depends on claim 10, the
combination of Beard and Rathmann meets the limitations of this claim and
renders claim 14 obvious. Beard Decl. at ¶ 199.
8. Claim 19: “An electronic module of claim 1 wherein the configuration selected is (b), and the microchip also controls upon receiving a switch activation signal from a touch sensor, at least the activation of a function that automatically shuts off a period after such activation.”
As described above in § IX.A.1, Beard and Rathmann disclose the (b) con-
Petition for Inter Partes Review of USP 7,329,970
44
figuration of claim 1. Beard Decl. at ¶¶ 157-64, 201. Beard also discloses micro-
chip-controlled activation of functions in response to a switch activation signal
from the touch sensor that automatically shut off a period of time after activation.
Id. at ¶ 202. First, Beard discloses functions, such as the battery pack displaying
remaining battery capacity and time estimates regarding battery life. See, e.g.,
Beard at 6:66-7:5, 10:37-40; Beard Decl. at ¶ 203. The display of remaining bat-
tery capacity and display of remaining time estimates are each a “function” as de-
scribed in the claim. Beard Decl. at ¶ 203. Second, Beard discloses that a micro-
chip (control circuit) controls the activation of these functions in response to an ac-
tivation signal or “request” received from the user interface. See, e.g., Beard at
11:12-22, 6:63-7:5; Beard Decl. at ¶ 204. Third, Beard discloses that the power-
level display function automatically shuts off after a ten-second period of time. See,
e.g., Beard at 10:48-50, 10:51-56; Beard Decl. at ¶¶ 205-06; see also note 9, supra;
Beard Decl. at ¶ 148 n.18. Beard discloses a function that is shut off after a period
of time. Beard Decl. at ¶ 206. Accordingly, Beard discloses the additional limita-
tions of this claim, and since claim 19 is dependent on claim 1, the combination of
Beard and Rathmann satisfies the requirements of this claim and renders it obvi-
ous. Id. at ¶ 207.
9. Claim 48: “An electronic module of claim 1 wherein the configuration selected is (c) and the user interface comprises at least a touch sensor switch.”
Petition for Inter Partes Review of USP 7,329,970
45
Beard and Rathmann disclose the limitations of claim 48. Beard Decl. at ¶
218. As described in § IX.A.1, Beard and Rathmann disclose the (c) configuration
of claim 1. Id. at ¶¶ 165-71, 209. Beard discloses a user interface that comprises a
touch sensor switch, including touch sensing circuitry 221 and touch contacts 211
and 213. See, e.g., Beard at FIG. 11; Beard Decl. at ¶ 210. The touch sensor may
alternatively comprise a single touch contact. See, e.g., Beard at 11:17-19, FIG. 9
at item 155; Beard Decl. at ¶ 210. Beard discloses that the user interface comprises
this touch sensor switch. See, e.g., Beard at 11:12-22; Beard Decl. at ¶ 211.
Accordingly, Beard discloses the additional limitations of this claim, and since
claim 48 is dependent on claim 1, the combination of Beard and Rathmann meets
all limitations of this claim and renders claim 48 obvious. Beard Decl. at ¶ 212.
10. Claim 49: “An electronic module of claim 1 wherein the location indicator, the switch, the power source and the load are all enclosed in and/or attached to the product housing.”
Beard discloses the limitations of claim 49. Beard Decl. at ¶ 213. Beard
teaches that the product may consist of portable terminal 101 with battery pack 103
inserted into a slot in the bottom of the terminal. See, e.g., Beard at FIG. 8,
(§ IX.A.4, supra), 9:15-16; Beard Decl. at ¶ 214. The power source (batteries in
the battery pack 103) and the load (energy consuming parts of portable terminal
101) are enclosed or attached to the product housing. Beard Decl. at ¶ 214. Beard
also discloses that the switch, contacts 115 and 117, is located on the back of the
Petition for Inter Partes Review of USP 7,329,970
46
product. Id. at ¶ 215. It is attached to the product housing. See, e.g., Beard at FIG.
8; 9:17-23; Beard Decl. at ¶ 215.
As described in the discussion of claim 1 from which claim 49 depends,
Beard discloses a luminous location indicator in embodiments with an LED-
indicator display, with an LCD-indicator display (which was commonly backlit),
and the obvious combination of these two adjacent embodiments. See, e.g.,
§ IX.A.1; Beard at 6:67-7:5, 7:59-63, 11:14-22, 11:32-33, 11:44-47, FIGs. 5-6 and
8-11; Beard Decl. at ¶¶ 141-48, 216. Beard teaches that the indicator 111 is at-
tached to the product housing on the back of the product. See, e.g., Beard at FIG. 8,
9:17-23; Beard Decl. at ¶ 217. Beard discloses the requirements of this claim and
since claim 49 depends on claim 1, the combination of Beard and Rathmann meets
the limitations of this claim and renders claim 49 obvious. Beard Decl. at ¶ 218.
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
1. Claim 4: “An electronic module of claim 3 wherein the user interface comprises multiple switches and/or buttons.”
Danielson discloses the limitations of claim 4. Beard Decl. at ¶ 219. Dan-
ielson discloses a data terminal designed to be powered by the battery pack de-
scribed in Beard, which terminal includes a common user interface element—a
keyboard with multiple buttons—in addition to other user interface elements such
as the touch-sensor switch on the battery pack and a display. See, e.g., Danielson at
Petition for Inter Partes Review of USP 7,329,970
47
FIG. 1; 8:55-57; Beard Decl. at ¶ 220. Danielson describes another portion of ter-
minal’s the user interface: an “ON/OFF switch.” Danielson at 22:65-66. The data
terminal is part of the electronic module, which as claimed in independent claim 1,
comprises both the energy consuming load (the energy consuming parts of the ter-
minal) and a power source (battery pack). See, e.g., Danielson at FIGs. 1-2; Beard
Decl. at ¶ 221. The keyboard is part of the user interface and comprises multiple
switches and/or buttons. See, e.g., Danielson at FIG. 1; Beard Decl. at ¶ 221.
Danielson further teaches how an operator uses the keyboard interface. See,
e.g., Danielson at 8:59-64, 23:67-24:2; Beard Decl. at ¶ 222. A POSITA would be
motivated to combine the disclosures of Beard and Danielson for the reasons ex-
plained in § VIII.B. Beard Decl. at ¶ 223. Accordingly, Danielson discloses the ad-
ditional limitations of this claim, and since claim 4 is dependent on claim 3, the
combination of Beard with Rathmann and Danielson meets all limitations of this
claim and renders claim 4 obvious. Id. at ¶ 224.
2. Claim 13: “An electronic module of claim 12 wherein the product comprises radio frequency (RF) circuitry.”
Danielson discloses a data terminal that comprises radio frequency circuitry.
See, e.g., Danielson at 11:51-53 (“The accessory pod 30 may further contain a ra-
dio frequency transceiver 96 ….”), 3:45-52; Beard Decl. at ¶ 225. A POSITA
would be motivated to combine the disclosures of Beard and Danielson for the rea-
sons explained in § VIII.B. Beard Decl. at ¶ 226. And as described above in
Petition for Inter Partes Review of USP 7,329,970
48
§ IX.A.6, Beard and Rathmann also disclose the limitations of claim 12. Id. at ¶
227. Accordingly, Danielson discloses the requirements of this claim and since
claim 13 depends on claim 12, the combination of Beard with Rathmann and Dan-
ielson meets renders claim 13 obvious. Id. at ¶ 228.
3. Claim 51: “An electronic module of claim 1 wherein the product comprises radio frequency circuitry (RF).”
Danielson discloses a data terminal that comprises radio frequency circuitry.
See, e.g., Danielson at 11:51-53, 3:45-52; Beard Decl. at ¶ 229. A POSITA would
be motivated to combine the disclosures of Beard and Danielson for the reasons
explained in § VIII.B. Beard Decl. at ¶¶ 110-15, 230. Accordingly, the combina-
tion of Beard and Danielson discloses the requirements of this claim and since
claim 51 depends on claim 1, the combination of Beard with Rathmann and Dan-
ielson renders claim 51 obvious. Id. at ¶ 231.
4. Claim 52
[52a] “A method of operating a product which includes a visible luminous indicator, an energy consuming load and a power source for powering the load, the method including the steps of”
The preamble of claim 52—the language preceding the “steps of” the
claimed method—is limiting. Beard Decl. at ¶ 232. The phrases “visible luminous
indicator,” “energy consuming load,” and “power source for powering the load”
introduce and provide antecedent basis for terms found later in the body of the
claims. Id. Consequently, the preamble is “necessary to give life, meaning, and
Petition for Inter Partes Review of USP 7,329,970
49
vitality” to the claim. The limitations in the preamble are disclosed by Beard. Id.
Beard discloses a method for operating a product, such as a portable
electronic device. Id. at ¶ 233. 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, 4:38-39. 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. And Beard discloses methods that allow a user to operate the
microchip-controlled product. Beard Decl. at ¶ 233. For example, a user touches
contacts on the battery pack of the product to receive a visible indication of the
state of the product’s battery, removes the battery pack to save operational states
and data, and inserts the pack to reload these states and data. See., e.g., Beard at
Abstract; Beard Decl. at ¶ 233.
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 ¶ 234.
To a POSITA, as well as to a layperson, the illumination of the LEDs as described
in Beard would indicate not only the remaining battery capacity, but also the loca-
tion of the device containing the visible LEDs. Beard Decl. at ¶ 234.
Beard discloses an adjacent embodiment with an LCD indicator rather than
Petition for Inter Partes Review of USP 7,329,970
50
an LED indicator. See, e.g., Beard at FIGs. 8-11; Beard Decl. at ¶ 235. The LCD
indicator displays battery charge status information, as well, including the amount
of charge stored by the batteries when fully charged, and the used amount of such
charge. See, e.g., Beard at 11:31-33, 11:44-47; Beard Decl. at ¶ 235.
An LCD indicator may or may not be luminous. Beard Decl. at ¶¶ 148 n.18,
236; note 9, supra. But a POSITA would be motivated to combine the indicator
functionality disclosed in the second embodiment of Figures 8-11 with the lumi-
nous LED indicator disclosed in the first embodiment of Figures 1-6, at least be-
cause both display battery charge information of data terminals, and they can be
used interchangeably. Beard Decl. at ¶ 236. A POSITA would view the use of an
LED instead of an LCD as a predictable, expected variation rather than a leap of
innovation, especially since both types of indicators are taught by Beard in adja-
cent embodiments and both were commonly used in the field and well known as
reliable, low-cost indicators. Id. Therefore, the combination of the two adjacent
embodiments in Beard discloses the use of a microchip to control the activation of
the luminous indicator and was obvious to a POSITA. Id.
Beard further teaches that the product comprises an energy consuming load.
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 depicted in device 203 in Figure 11.
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See, e.g., Beard at 11:57-61; FIG. 11; Beard Decl. at ¶ 237. Such portable electron-
ic devices with loads are depicted and described throughout the Beard specifica-
tion. See, e.g., Beard at FIG. 4, FIG. 5, FIG. 8; Beard Decl. at ¶ 237.
Finally, Beard discloses that the product comprises a power source for pow-
ering the load. Beard Decl. at ¶ 238. Figure 11 of Beard (§ IX.A.1, supra) depicts a
battery pack 201 that powers portable electronic device 203. See, e.g., Beard at
11:10-12; Beard Decl. at ¶ 238. Specifically, Beard discloses that the power source
is the set of batteries, labeled 231, in the battery pack, which store and deliver elec-
tric charge. See, e.g., Beard at 11:24-26; Beard Decl. at ¶ 238.
[52b] “operating a user interface switch, that is a touch sensor type switch which is not a serial link in a circuit from the power source to the load to power the load, to control the operation of a microchip,”
Beard also discloses claim step [52b]. Beard Decl. at ¶ 239. Beard discloses
a user interface switch that is a touch sensor type switch. Beard teaches a touch
sensor switch, including touch sensing circuitry 221 and touch contacts 211 and
213. See, e.g., Beard at FIG. 11; Beard Decl. at ¶ 240. The touch sensor switch
may alternatively comprise a single touch contact. See, e.g., Beard at 11:17-19,
FIG. 9 at item 155; Beard Decl. at ¶ 240. Beard discloses that the touch sensor
switch is a user interface switch. See, e.g., Beard at 11:12-22; Beard Decl. at ¶ 241.
Beard discloses that when an operator touches both contacts 211 and 213,
the touch sensing circuitry 221 detects an “impedance change across the contacts”
Petition for Inter Partes Review of USP 7,329,970
52
and activates the control circuit to service the request. Beard at 11:14-16. This im-
pedance 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 ¶ 242. Beard alternatively discloses that a
single touch sensor “might be used in a capacitive sensing arrangement.” Beard at
11:17-19. The single touch sensor senses a change in capacitance resulting from
the touch of the operator’s electrically conductive finger. Beard Decl. at ¶ 242.
Both types of touch sensor described in Beard rely on the conductivity of the oper-
ator’s finger to send a command, rather than to deliver power from the power
source. Id.
Beard discloses that the touch sensor switch is not a serial link in a circuit
from the power source to the load to power the load. Id. at ¶ 243. As shown in
Figure 11, touch sensing circuitry 221 and touch contacts 211 and 213 are not a
serial link in a circuit that transfers power from the batteries 231 to power the load
in device 203. See, e.g., Beard at FIG. 11 (§ IX.A.1, supra); Beard Decl. at ¶ 243.
Beard discloses a circuit that transfers power between batteries 231 and the
load (any energy consuming part of device 203) via battery contacts 241 and 243
and device contacts 251 and 253. See, e.g., Beard at 11:63-65; Beard Decl. at ¶
244. These contacts provide a direct connection between the battery and the
device. Beard Decl. at ¶ 244. The touch sensing circuitry is not a part of that
Petition for Inter Partes Review of USP 7,329,970
53
connection. Id. The touch sensing circuitry is itself separately connected to the
battery contacts, but it is not a link between the battery and the device. Id. The
touch sensor switch is not a link, serial or otherwise, in a circuit that transfers
power from the power source to power the load: the battery power source is
connected to the load (any energy consuming part of device 203) without need for
the touch sensing circuitry 221. Id.
Beard also discloses operating the touch sensor switch to control operation
of a microchip (control circuit), for example by activating the chip to service a user
request. See, e.g., Beard at 11:12-22; Beard Decl. at ¶ 245.
[52c] “using the microchip to control the connection of the power source to the load and the activation of the indicator, and,”
Claim element [52c] is disclosed by Beard in view of Danielson. Beard
Decl. at ¶ 246. Beard discloses a programmable microchip control circuit 223
connected both to the display 225 and the battery power source 231. Id. at ¶ 247.
Beard in view of Danielson disclose using microchip control circuit 223 to
control the connection of the power source (batteries 231) to the load (energy
consuming parts of the device 203). Id. at ¶ 248. The battery pack supplies power
to the device through paired ground (241/251) and supply voltage Vcc (243/253)
connections. See, e.g., Beard at 11:63-65; see also id. at 8:5; Beard Decl. at ¶ 248.
Beard addresses the problem of data loss caused by unsafe shutdown of a
device (e.g., by suddenly removing the battery pack from the device). See, e.g.,
Petition for Inter Partes Review of USP 7,329,970
54
Beard at 2:18-28; Beard Decl. at ¶ 249. Beard discloses a detailed solution: the de-
vice includes “removal sensing circuitry” to detect removal or insertion of the bat-
tery, and the device saves its current status in memory (before the battery is fully
removed) and restores this status from memory (when the battery is re-inserted).
See, e.g., Beard at 12:4-24; Beard Decl. at ¶ 249.
Beard addresses the related problem that a battery may not have enough
power to activate a host device. Beard Decl. at ¶ 250. It teaches that the device may
only enter a fully operational state “if sufficient power is available” from the bat-
teries. Beard at 11:67-12:4. Beard, however, provides limited detail of how the sys-
tem handles a low power battery and avoids an unsafe shutdown caused by at-
tempting to start the system with a low power battery. Beard Decl. at ¶ 250.
Danielson, describing a Norand device for use with a smart battery pack like
the one described in Beard, provides further detail on this process. Beard Decl. at ¶
251. It includes a flowchart, in Figure 22, outlining the process to handle a low
power battery, and specifically teaching that if battery voltage is not “OK,” the
connection of the power source to the load is controlled by a “REMOVE POWER”
command. See, e.g., Danielson at FIG. 22; Beard Decl. at ¶ 251. In particular, Dan-
ielson discloses testing the voltage of the battery when the user turns on the device.
See, e.g., Danielson at 23:27-34, FIG. 22; Beard Decl. at ¶ 252. If the voltage is
“OK”, the prior device status is restored and the device resumes operation. See,
Petition for Inter Partes Review of USP 7,329,970
55
e.g., Danielson at 23:34-39, FIG. 22; Beard Decl. at ¶ 252. If the voltage is not
“OK”, perhaps because it has fallen “below a desirable minimum voltage,” “power
to the data terminal may be shut down” even though the device was turned “on”
and the battery would otherwise be connected to the energy consuming parts of the
device. Danielson at 23:17-26, FIG. 22; Beard Decl. at ¶ 252. Thus, Danielson dis-
closes a process of controlling power from the power source to the load if the pow-
er source fails a voltage check. See, e.g., Danielson at 23:17-26, FIG. 22; Beard
Decl. at ¶ 253.
Beard discloses a similar result: the device becomes fully operational only
“if sufficient power is available” from the battery power source; but Beard does not
detail the process. Beard at 11:67-12:4; Beard Decl. at ¶ 254. It would have been
obvious to a POSITA to implement the power source control function described in
Figure 22 of Danielson in the microchip control circuit 223 disclosed in Beard for
the reasons described above in § VIII.B, and because both Danielson and Beard are
concerned with allowing a device to become fully operational only if sufficient
power is available, because a device that attempts to start up without sufficient
power available could crash unexpectedly without a safe shutdown. Beard Decl. at
¶¶ 254-55. Finally, the microchip control circuit 223 in Beard is the natural place
to implement the functionality described in Danielson because it was a well-known
general purpose programmable microchip capable of performing numerous func-
Petition for Inter Partes Review of USP 7,329,970
56
tions, and as the microchip connected to the battery power source, it is the obvious
choice to control the connection of the battery power source to the device load. Id.
at ¶ 255.
Beard also discloses using microchip control circuit 223 to control the
activation of the indicator. See, e.g., Beard at 7:59-63, FIG. 7 (LED), 11:14-22.
FIG. 11 (LCD); Beard Decl. at ¶¶ 256-57.
The combination of Beard and Danielson thus discloses this claim element.
Beard discloses using the microchip control circuit 223 to control the activation of
the indicator. Beard Decl. at ¶ 258. Danielson discloses a process to control the
connection of the power source to the load in order to guard against attempting to
start up using a power source with a dangerously low voltage. Id. It would have
been obvious to a POSITA to implement this feature disclosed in Danielson in mi-
crochip control circuit 223 of Beard because this chip is the logical option to pro-
gram to perform the operation. Id.
[52d] “to activate the indicator to show at least one of the following when the load is not activated: a condition of the product, an activation of the switch, and a power level of the power source.”
Beard in view of Rathmann discloses claim element [52d]. Beard Decl. at ¶
259. Beard discloses the activation of the indicator to show each of the options of
the claim element. Id. at ¶ 260. First, the indicator activates to display the state of
battery power level, which is a condition of the product. See, e.g., Beard at 6:63-
Petition for Inter Partes Review of USP 7,329,970
57
7:5, 11:12-22, FIGs. 5-6, 8-11; Beard Decl. at ¶ 262. Second, the indicator acti-
vates to display this information in response to activation of the switch, showing
activation of the switch. See, e.g., Beard at 6:63-7:5, 11:12-22; Beard Decl. at ¶
262. Third, the battery power information displays the power level of the power
source (the batteries). See, e.g., Beard at 6:63-7:5, 11:12-22; Beard Decl. at ¶ 262.
The indicator thus shows all three options listed in claim element [52d]. Beard
Decl. at ¶ 262.
Beard teaches that this indicator can be activated when the load is not acti-
vated. Beard Decl. at ¶ 263. The load includes the energy consuming parts of the
portable device. Id. In one embodiment, the battery pack determines the loading
characteristics by communicating with the portable electronic device via infrared
communication. See, e.g., Beard at 11:52-57; Beard Decl. at ¶ 263. Because this
requires the device to engage in infrared communication, this requires an activated
load. Beard Decl. at ¶ 263. But in another embodiment, Beard explicitly discloses a
battery pack that displays charge status information in response to a user’s touch
without an activated load. Id. at ¶ 264. In this embodiment, control circuit 223
(microchip) uses previously monitored load characteristics stored in battery
memory, rather than obtaining these characteristics from device 203 itself. See,
e.g., Beard at 11:23-30; Beard Decl. at ¶ 264. Other disclosures in Beard reinforce
and confirm that the activating the either the LED or LCD indication of battery ca-
Petition for Inter Partes Review of USP 7,329,970
58
pacity can be done without the user activating the load. Beard Decl. at ¶ 265. For
example, Beard discloses that the user may activate either type of battery charge
status indication regardless of whether the battery pack has been inserted into the
electronic device. See, e.g., Beard at 6:45-67 (discussing the LED embodiment),
11:10-12 (discussing the LCD embodiment); Beard Decl. at ¶ 265.
Beard provides limited detail (but more than the ’970 patent) of precisely
how the indicator is activated when the load is not activated. Beard Decl. at ¶ 266.
A POSITA naturally would look to Rathmann for the reasons discussed in §
VIII.A, and especially because Rathmann discloses additional detail about how the
control circuitry activates the indicator. See, e.g., Rathmann at 16:24-29; Beard
Decl. at ¶ 266. Specifically, Rathmann discloses in detail each and every step of a
process known as “LED_display” by which the microchip activates the indicator.
See, e.g., § VII.B; Rathmann at FIG. 34, 58:31-59:32; Beard Decl. at ¶¶ 91-93,
267. None of these steps in the LED_display routine interacts with or requests in-
formation from the load or otherwise requires an activated load. See, e.g.,
Rathmann at 58:31-59:32; Beard Decl. at ¶ 267. Instead, in accordance with the
SBS Data Specification, Rathmann discloses using the battery pack’s microchip to
estimate battery capacity. See, e.g., Rathmann at 24:24-33; Beard Decl. at ¶ 267.
Accordingly, the combination of Beard with Rathmann and Danielson meets
the limitations of this claim and renders it obvious. Beard Decl. at ¶ 269.
Petition for Inter Partes Review of USP 7,329,970
59
X. CONCLUSION
For the reasons set forth above, inter partes review of claims 1, 3-5, 10-14,
19, 48, 49, 51, and 52 of the ’970 patent is requested.
Petition for Inter Partes Review of USP 7,329,970
60
Respectfully submitted, Dated: May 11, 2015 By: /Robert Steinberg/ Robert Steinberg (Reg. No. 33,144)
Latham & Watkins LLP 355 South Grand Avenue Los Angeles, CA 90071-1560 213.485.1234; 213.891.8763 (Fax) Matthew J. Moore (Reg. No. 42,012) Latham & Watkins LLP 555 Eleventh Street, NW Suite 1000 Washington, D.C. 20004-1304 202.637.2278; 202.637.2201 (Fax) Gabriel S. Gross (Reg. No. 52,973) Latham & Watkins LLP 140 Scott Drive Menlo Park, CA 94065 650.463.2628; 650.463.2600 (Fax) Counsel for Petitioner Apple Inc. Phillip E. Morton (Reg. No. 57,835) Cooley LLP 1299 Pennsylvania Ave., NW Suite 700 Washington, D.C. 20004 703.456.8668; 703.456.8100 (Fax) DeAnna Allen (Reg. No. 46,516) Cooley LLP 1299 Pennsylvania Ave., NW Suite 700 Washington, D.C. 20004 202.842.7896; 202.842.7899 (Fax) Joseph M. Drayton (pro hac vice
Petition for Inter Partes Review of USP 7,329,970
61
motion to be filed) Cooley LLP 1299 Pennsylvania Ave., NW Suite 700 Washington, D.C. 20004 212.479.6539; 212.849.6275 (Fax) Counsel for Petitioner Motorola Mobility LLC Doris Johnson Hines (Reg. No. 34,629) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4250; 202.408.4400 (Fax) Luke McCammon (Reg. No. 70,691) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4273; 202.408.4400 (Fax) Counsel for Petitioner Toshiba America Information Systems, Inc.
Petition for Inter Partes Review of USP 7,329,970
CERTIFICATE OF SERVICE
The undersigned certifies that a complete copy of this Petition for Inter
Partes Review of U.S. Patent No. 7,329,970 and all Exhibits and other docu-
ments filed together with this Petition were served on the official correspond-
ence address for U.S. Patent No. 7,329,970 shown in PAIR and Global Touch
Solutions, LLC’s current patent counsel:
William A. Blake LLC 19814 Falling Spring Ct Laytonsville, MD 20882
Alan A. Wright Hae-Chan Park H.C. Park & Associates, PLC 1894 Preston White Drive Reston, VA 20191
via FEDERAL EXPRESS overnight delivery, on May 11, 2015
By: /Robert Steinberg/ Robert Steinberg (Reg. No. 33,144)
Latham & Watkins LLP 355 South Grand Avenue Los Angeles, CA 90071-1560
213.485.1234; 213.891.8763 (Fax) Counsel for Petitioners