Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 41
`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
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 41
`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 AND BACKGROUND
`This case has been remanded to us by the United States Court of
`Appeals for the Federal Circuit. The Court instructed in its Opinion that,
`with respect to Petitioner’s challenges to claims 40, 41, 43, 45, 47, 48,
`61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the “previously
`instituted claims”), we should “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 *9 (Fed. Cir. June 18, 2019). The Court further
`instructed us to “consider the patentability of claims 37, 38, and 39.” Id. at
`*10. Pursuant to this latter instruction, we modified our Decision on
`Institution in this inter partes review so as to include review of claims 37–39
`(the “newly instituted claims”).
`ANALYSIS
`The Board’s procedures following remand of a case by the Federal
`Circuit are set forth in the Board’s Standard Operating Procedure (SOP) 9.1
`Pursuant to SOP 9, a teleconference was held on August 15, 2019, among
`the respective counsel for the parties and Judges Giannetti, DeFranco, and
`Jivani. The purpose of this call was to hear from the parties their respective
`proposals on the matters set forth in Appendix 2 of SOP 9. Id. at 5
`(Appendix 2: Guidance for Parties Regarding Remand Procedures).
`
`
`1 Standard Operating Procedure 9 (rev. 1): Procedure for Decisions
`Remanded from the Federal Circuit for Further Proceedings, available at
`https://www.uspto.gov/sites/default/files/documents/sop_9_%20procedure_f
`or_decisions_remanded_from_the_federal_circuit.pdf.
`
`2
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`We summarize below the parties’ respective positions, first as to the
`previously instituted claims, and then as to the newly instituted claims.
`Previously Instituted Claims
`Petitioner proposes that we proceed immediately to issuing a final
`written decision on the previously instituted claims. Petitioner does not seek
`leave to submit additional briefing or supplement the evidentiary record with
`respect to these claims. If, however, we were to allow Patent Owner to
`submit additional briefing on these claims, then Petitioner requests that we
`similarly allow it to brief these claims.
`Patent Owner proposes that we permit simultaneous briefing by both
`parties on the previously instituted claims. Patent Owner proposes that such
`briefing should address the issues of claim construction and whether
`Petitioner has shown sufficiently a reasonable expectation of success. Patent
`Owner suggests the briefing be limited to ten pages per side. Like
`Petitioner, Patent Owner does not seek leave to submit supplemental
`evidence with respect to these claims.
`Having considered the parties’ proposals, we grant Patent Owner’s
`request for briefing of limited scope and Petitioner’s corresponding request
`for similar briefing. The particular limits of the authorized briefing are set
`forth below. In light of the parties’ agreement that additional evidence on
`these claims is unnecessary, we do not authorize submission of any
`additional evidence.
`
`Newly Instituted Claims
`In our Decision on Institution, 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
`
`3
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`referring to a supply voltage of the oscillator.” Dec. on Inst. 9. We further
`found that Petitioner 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
`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
`claims 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.
`Petitioner observes that the parties have not had an opportunity to
`develop the trial record on these newly instituted claims. Petitioner proposes
`that we permit the parties to submit briefing on these claims, including on
`our claim construction. Petitioner asserts that briefing is warranted in the
`interests of justice because Petitioner’s only opportunity in the current
`record to respond to our construction has been in the context of Petitioner’s
`request for rehearing of our Decision on Institution. Petitioner points out
`that such a rehearing request is subject to a specific burden of showing abuse
`of discretion, which is not Petitioner’s burden at institution or during trial.
`Although it seeks additional briefing, Petitioner does not seek leave to
`supplement the evidentiary record with respect to these claims.
`Conversely, Patent Owner proposes that we proceed immediately to
`issuing a final written decision on the newly instituted claims. Patent Owner
`does not seek leave to submit additional briefing or supplement the
`evidentiary record with respect to these claims at this time because Patent
`Owner does not dispute our construction of the term “supply voltage.”
`
`4
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`If, however, we were to allow Petitioner to submit additional briefing on
`these claims, then Patent Owner requests that we similarly authorize it to
`brief these claims. Moreover, Patent Owner observes that our construction
`of “supply voltage” was set forth in our Decision on Institution and is,
`therefore, preliminary. Accordingly, if we determine our preliminary
`construction should be amended, then Patent Owner asks that we afford the
`parties an opportunity to develop fully the trial record, including the
`submission of evidence and briefing in the ordinary course under our rules.
`Having considered the parties’ proposals, we grant Petitioner’s
`request for leave to submit briefing on these claims, including on our
`construction of the term “supply voltage” in claim 37, and Patent Owner’s
`corresponding request for similar briefing. The particular limits of the
`authorized briefing are set forth below. In light of the parties’ agreement
`that additional evidence on these claims is unnecessary at this time, we do
`not authorize submission of any additional evidence. After review of the
`parties’ briefs, if we determine that our construction as set forth in our
`Decision on Institution should be modified, we will afford the parties an
`opportunity to develop fully the trial record at that time, including the
`submission of evidence and additional briefing, as Patent Owner requests.
`
`
`
`5
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`ORDER
`
`IT IS, therefore,
`ORDERED that the each party is authorized to submit a brief of no
`more than fifteen pages addressing the following issues:
`(1)
`the Federal Circuit’s determination in the context of the
`previously instituted claims that “the claims are not limited to situations in
`which different frequencies are provided to different rows” and that “[a]
`reasonable expectation of success thus only requires that different
`frequencies be provided to the entire pad;”
`(2) whether Petitioner has shown that there would have been a
`reasonable expectation of success in combining the teaching of Gerpheide
`with the teachings of Ingraham I, Caldwell, and Wheeler (in certain
`instances) to arrive at the inventions of the previously instituted claims;
`(3)
`our construction in our Decision on Institution of the term
`“supply voltage,” as recited in independent claim 37; and
`(4) whether Petitioner has shown by a preponderance of the
`evidence that claims 37–39 are rendered obvious over the asserted
`combination of Ingraham I, Caldwell, and Gerpheide;
`FURTHER ORDERED that each party’s brief shall be filed no later
`than October 3, 2019;
`FURTHER ORDERED that each party is authorized to submit a
`response brief of no more than five pages limited in scope to matters raised
`in the opposing party’s opening brief;
`FURTHER ORDERED that each party’s response brief shall be filed
`no later than October 17, 2019;
`
`6
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`FURTHER ORDERED that the parties shall not submit any further
`evidence on the matters being briefed; and
`FURTHER ORDERED that no additional briefing is authorized.
`
`7
`
`
`
`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
`
`
`
`8
`
`
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