in the united states patent and trademark...

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.


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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


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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


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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-


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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)


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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)

([email protected])

Postal & Hand-Delivery Address:

Latham & Watkins LLP

Matthew J. Moore (Reg. No. 42,012)

([email protected])


555 Eleventh Street, NW, Ste. 1000


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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)

([email protected])


140 Scott Drive

Menlo Park, CA 94065

T: 650-463-2628; F: 650-463-2600

Phillip E. Morton (Reg. No. 57,835)

([email protected])

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)

([email protected])

Cooley LLP



T: 202-842-7896; F: 202-842-7899

Joseph M. Drayton (PHV to be filed)

([email protected])

Cooley LLP



T: 212-479-6539; F: 212-849-6275

BACKUP COUNSEL BACKUP COUNSEL Doris Johnson Hines (Reg. No. 34,629)

([email protected])

Finnegan, Henderson, Farabow, Garrett

& Dunner, L.L.P.

901 New York Ave., NW


T: 202-408-4250; F: 202-408-4400

Luke McCammon (Reg. No. 70,691)

([email protected])

Finnegan, Henderson, Farabow, Garrett

& Dunner, L.L.P.

901 New York Ave., NW


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.


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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,


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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


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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-


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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


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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.


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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.


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”


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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-


11

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


12

(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.


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


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


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


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


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


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


19

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.


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-


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.


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


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


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


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


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.


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.


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,


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


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


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


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


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


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.


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,


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


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


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,


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


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.


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


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.


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-


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.”


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


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


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


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


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


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.


51

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”


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


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.,


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,


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-


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-


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-


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.


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.


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


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.


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

in the united states patent and trademark...

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