`571-272-7822
`
`Paper 40
`
`Entered: September 05, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`________________________
`
`Case IPR2016-00908
`Patent 5,796,183
`____________
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`INTRODUCTION
`In a decision dated June 12, 2019, the United States Court of Appeals
`for the Federal Circuit remanded this case to us to consider the patentability
`of claims 37–39 of U.S. Patent No. 5,796,183 (the “’183 patent”). Samsung
`Electronics Co., Ltd., v. UUSI, LLC, DBA Nartron, 2018-1310 *10
`(Fed. Cir. June 18, 2019). This Order is being entered pursuant to those
`instructions.
`
`BACKGROUND AND ANALYSIS
`Among its challenges in this proceeding, Petitioner challenged
`claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and
`Gerpheide.1 Pet. 3.
`We determined in our Decision on Institution (Paper 12) that
`Petitioner had demonstrated a reasonable likelihood of prevailing on its
`challenges to various other claims of the ’183 patent, but not on its challenge
`to claims 37–39.2 Dec. on Inst. 31. In particular, we determined, “based on
`the context of the supply voltage limitation in [independent claim 37], that
`one of ordinary skill in the art would understand the term . . . ‘supply
`voltage’ as referring to a supply voltage of the oscillator.” Dec. on Inst. 9.
`We further found that Petitioner had identified the 15V supply voltage for
`microcomputer 80, generated by Ingraham I’s power supply 70, as meeting
`the claimed supply voltage. Id. at 15. We determined that this identification
`
`
`1 Ingraham, U.S. Patent No. 5,087,825, issued Feb. 11, 1992, (Ex. 1007,
`“Ingraham I”); Caldwell, U.S. Patent No. 5,594,222, issued Jan. 14, 1997
`(Ex. 1009, “Caldwell”); and Gerpheide et al., U.S. Patent No. 5,565,658,
`issued Oct. 15, 1996 (Ex. 1012, “Gerpheide”).
`2 We instituted review of claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88,
`90, 91, 94, 96, 97, 99, 101, and 102. Inst. Dec. 31.
`
`2
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`was insufficient because “[t]he supply voltage limitation of claim 37 . . .
`refers to a supply voltage of the claimed oscillator, not the claimed
`microcontroller.” Id. Thus, we originally declined to institute review of
`claim 37 and its dependent claims 38 and 39 in light of our construction of
`the claimed supply voltage as “refer[ring] to the supply voltage of the
`oscillator.” Id.
`After institution, we proceeded through trial and an oral hearing was
`conducted on June 22, 2017.
`On December 13, 2017, we entered a Final Written Decision
`concluding that Petitioner had not shown by a preponderance of the evidence
`that the instituted claims were unpatentable. Paper 35, 24. Petitioner
`appealed our Decision to the Federal Circuit, which vacated our Decision
`and remanded the matter back to us to “consider whether Samsung has
`shown that there would have been a reasonable expectation of success in
`combining the teaching of Gerpheide with the teachings of
`Ingraham/Caldwell to arrive at the claimed invention.” Samsung Electronics
`Co., Ltd., v. UUSI, LLC, DBA Nartron, 2018-1310, at *9 (Fed. Cir. June 18,
`2019). The Court further instructed us to “consider the patentability of
`claims 37, 38, and 39” (id. at 10) because, on April 24, 2018, the Supreme
`Court of the United States held that a decision to institute under 35 U.S.C.
`§ 314 may not institute on less than all claims challenged in the petition.
`SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018).
`Pursuant to the Federal Circuit’s instruction in this case and in light of
`SAS Inst., Inc., we modify our Decision on Institution to institute review of
`claims 37–39 of the ’183 patent as rendered obvious over Ingraham I,
`Caldwell, and Gerpheide.
`
`3
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`ORDER
`
`IT IS, therefore,
`ORDERED that our Institution Decision (Paper 12) is modified to
`include institution of inter partes review of claims 37–39 of the ’183 patent
`as obvious over Ingraham I, Caldwell, and Gerpheide.
`
`
`
`4
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`PETITIONER:
`Naveen Modi
`Joseph Palys
`Chetan Bansal
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`
`PATENT OWNER:
`Stephen Underwood
`GLASER, WEIL, FINK, HOWARD
` AVCHEN, & SHAPIRO LLP
`sunderwood@glaserweil.com
`
`5
`
`
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