Paper No. ______
`Filed: October 3, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
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`____________________
`
`
`Case IPR2016-00908
`Patent No. 5,796,183
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`____________________
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`
`PATENT OWNER’S BRIEF IN RESPONSE TO
`PAPER NUMBER 41
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`1722443
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`Filed: October 3, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`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 No. 5,796,183
`
`____________________
`
`
`PATENT OWNER’S BRIEF IN RESPONSE TO
`PAPER NUMBER 41
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`1722443
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`TABLE OF CONTENTS
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`Case IPR2016-00908
`Patent No. 5,796,183
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 3
`A.
`The Federal Circuit’s Construction is Binding on Remand .................. 3
`B.
`The Federal Circuit’s Construction is Consistent with the
`Board’s Application of That Term in Its Final Written Decision ......... 4
`C. Under the Federal Circuit’s Binding Construction, Samsung
`Still Cannot Prove a Reasonable Expectation of Success ..................... 6
`1.
`The Board Correctly Found that Samsung Failed to Prove
`a Reasonable Expectation of Success, Applying
`“Selectively Providing” in a Manner Consistent with the
`Federal Circuit’s Construction .................................................... 7
`Applying the Federal Circuit’s Binding Construction,
`Samsung Still Cannot Prove a Reasonable Expectation of
`Success ...................................................................................... 10
`The Board Correctly Ruled on Claim 37’s “Supply Voltage” ............ 14
`1.
`The Board’s Construction Was Correct .................................... 14
`2.
`The Board Applied Its Construction Properly .......................... 15
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`2.
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`D.
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`Page
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .............................................................................. 8
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ....................................................................... 8, 10
`Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc.,
`No. IPR2015-00249, 2019 WL 994581 (P.T.A.B. Mar. 1, 2019) .....................4, 5
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 12
`Samsung Electronics Co., Ltd. v. UUSI, LLC,
`775 Fed. App’x 692 (Fed. Cir. 2019) ............................................................ 3, 4, 6
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`FEDERAL STATUTES
`35 U.S.C. § 312(a)(3) ............................................................................................... 10
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`FEDERAL RULES
`37 C.F.R. § 42.6(e) ................................................................................................... 17
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`INTRODUCTION
`The Federal Circuit remanded this matter to the Board because the Board’s
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`I.
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`Final Written Decision (“FWD”) did not (1) expressly construe the phrase in the
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`challenged claims of U.S. Patent No. 5,796,183 reciting: the “microcontroller
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`selectively providing signal output frequencies to . . . a keypad,” and (2) did not
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`institute on challenged claims 37-39. After construing the “selectively providing”
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`term, the Federal Circuit directed the Board to consider, applying the Federal
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`Circuit’s construction, whether a person of ordinary skill in the art (“POSITA”)
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`would have reasonably expected to successfully combine Samsung’s proposed
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`three-way prior art combination (Ingraham, Caldwell and Gerpheide) to achieve the
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`invention claimed in the ’183 patent. The Federal Circuit also directed the Board to
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`consider whether Samsung met its burden to prove obviousness of claims 37-39.
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`Applying the Federal Circuit’s construction of “selectively providing signal
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`output frequencies,” Samsung’s evidence still fails to prove, by a preponderance of
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`the evidence, that the three-way prior art combination renders any challenged claim
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`obvious. And Samsung still fails to prove that claims 37-39 are obvious under the
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`Board’s correct claim construction of “supply voltage.”
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`1. Samsung lacks evidence that a POSITA would have had a reasonable
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`expectation of success in combining Gerpheide with Ingraham and Caldwell, under
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`the Federal Circuit’s construction of “selectively providing signal output
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`frequencies.” In its FWD, the Board implicitly read the “selectively providing” term
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`in a manner entirely consistent with the Federal Circuit’s construction. Samsung’s
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`Petition acknowledged that “selectively providing,” in the ’183 patent, requires
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`selection from multiple possible frequencies—just as the Federal Circuit later
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`agreed. With this reading, Samsung’s Petition relied on Gerpheide to satisfy the
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`“selectively providing”
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`limitation. But
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`the Board, applying Samsung’s
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`acknowledged reading of “selectively providing,” concluded that Samsung failed to
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`prove that a POSITA would have reasonably expected to successfully combine
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`Gerpheide’s selection of a frequency from multiple possible frequencies with an
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`Ingraham-Caldwell touch pad array. Paper 35 at 22-24.
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`Nothing in the Federal Circuit’s construction of “selectively providing signal
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`output frequencies” changes Samsung’s failure to establish a reasonable expectation
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`of success in combining Gerpheide’s frequency selection with Ingraham and
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`Caldwell. To the contrary, Samsung’s evidence remains lacking, for two separate
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`reasons. First, Gerpheide’s technique of avoiding noise by selecting from multiple
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`possible frequencies, in a “mesh” of touch pad electrodes, would not work with the
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`discrete array of capacitive touch pads in the proposed Caldwell-Ingraham system.
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`Second, Gerpheide’s noise-avoidance scheme, which selects from multiple possible
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`frequencies, can only work if a synchronous (i.e., frequency-selective) detector is
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`used. But neither Ingraham nor Caldwell uses a frequency-selective detector; both
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`use a raw, non-selective peak detector. Samsung failed to show how a POSITA
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`would modify an Ingraham-Caldwell multi-touch pad array to incorporate
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`Gerpheide’s frequency-selective detector, and failed to show that a POSITA would
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`have had a reasonable expectation of success in making such a modification. Thus,
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`the Board’s prior finding of non-obviousness should be affirmed.
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`2. The Board’s prior construction of claim 37’s “supply voltage” limitation
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`(Paper 12 at 9) was correct. Further, in its Institution Decision, the Board correctly
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`applied that construction to conclude that Samsung had not shown claim 37’s
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`“supply voltage” limitation to be in the prior art. Paper 12 at 15-16. The Board’s
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`prior decisions on claim 37’s “supply voltage” limitation were correct when they
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`were made, and they remain correct now. Thus, the Board should affirm its finding
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`that Samsung has not met its burden to prove that claims 37-39 are obvious.
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`II. ARGUMENT
`A. The Federal Circuit’s Construction is Binding on Remand
`The Federal Circuit construed “selectively providing signal output
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`frequencies” to mean “‘provid[ing]’ a frequency, selected from multiple possible
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`frequencies, to the entire touch pad.” Samsung Electronics Co., Ltd. v. UUSI, LLC,
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`775 Fed. App’x 692, 697 (Fed. Cir. 2019). In other words, under the Federal
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`Circuit’s construction, the microcontroller selectively provides at least one
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`frequency, chosen from multiple possible frequencies, to different rows of touch
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`terminals in a closely spaced array. 1
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`The Federal Circuit confirmed that its decision was one of claim construction.
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`Id. at 696 (“This is . . . a legal determination regarding claim construction”), 697
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`(“[b]ased on the proper claim construction, we vacate and remand”). This makes the
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`Federal Circuit’s decision the law of the case—binding on the Board. Nestle
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`Healthcare Nutrition, Inc. v. Steuben Foods, Inc., No. IPR2015-00249, 2019 WL
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`994581, at *4 (P.T.A.B. Mar. 1, 2019). Accordingly, on remand, the Board must
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`construe “selectively providing signal output frequencies” in accordance with the
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`Federal Circuit’s construction, as “selectively providing at least one frequency from
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`multiple possible frequencies to different rows of touch terminals.”
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`B.
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`The Federal Circuit’s Construction is Consistent with the Board’s
`Application of that Term in Its Final Written Decision
`The Federal Circuit’s construction of “selectively providing signal output
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`frequencies” is fully consistent with the Board’s implicit reading of that term in its
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`FWD. Samsung’s Petition acknowledged that this limitation requires selecting from
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`among multiple available frequencies. See Paper 2 at 26-29. Samsung further
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`1 This construction is fully consistent with the specification, which explains—in
`detail—how a frequency is selected from multiple possible frequencies, based on
`an analysis of how the drive frequency impacts contamination-induced crosstalk
`between adjacent terminals. Ex. 1001, 8:9-11:60, 13:32-14:33; see also claims 40
`and 61 (reciting that “said signal output frequencies are selected to decrease a first
`impedance of said dielectric substrate relative to a second impedance of any
`contaminate that may create an electrical path on said dielectric substrate between
`said adjacent areas defined by the plurality of small sized input touch terminals”)
`(emphasis added).
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`admitted that neither of the primary references—Ingraham nor Caldwell—discloses
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`selecting from multiple possible frequencies. Id. Accordingly, for the “selectively
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`providing” limitation, Samsung turned to Gerpheide. Id.
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`Despite acknowledging in its Petition that “selectively providing signal output
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`frequencies” requires selecting from among multiple available frequencies, (Paper 2
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`at 26-29), Samsung did not propose a construction for that term. Paper 2 at 11-15.
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`Nartron did propose a construction, i.e., “selectively sending signals selected from
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`various frequencies from a microcontroller to the input touch terminals.” Paper 10
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`at 17-19. While Nartron’s proposed construction was consistent with Samsung’s
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`application of the phrase, the Board declined to adopt Nartron’s construction,
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`because Nartron did not show “why such a construction would clarify the plain and
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`ordinary meaning of the claim language.” Paper 12 at 12.
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`Although the Board did not expressly adopt a construction, it applied the
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`“selectively providing” term consistently with both Nartron’s proposed construction,
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`and with Samsung’s agreement that the term requires selection from among multiple
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`possible frequencies. The Board noted that Samsung relied on “Gerpheide as
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`teaching varying the oscillator signal frequency . . . to account for electrical
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`interference.” Paper 35 at 15 (emphasis added). The Board further noted that
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`Samsung “contends the system of Ingraham I-Caldwell-Gerpheide selectively
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`provides signal output frequencies, as opposed to only a single frequency.” Id. at 16
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`(emphasis added). Since the Board noted that Samsung relied on Gerpheide to
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`disclose multiple “frequencies, as opposed to only a single frequency,” the Board
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`plainly read the “selectively providing” term to require selecting from among
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`multiple possible frequencies. Id. This is exactly how the Federal Circuit ultimately
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`construed the term. Samsung, 775 Fed. App’x at 677.
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`In analyzing Samsung’s evidence of “reasonable expectation of success,” the
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`Board applied the “selectively providing” term just as the Federal Circuit ultimately
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`construed it. See Paper 35 at 22-24. The Board found that Samsung failed to prove
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`a reasonable expectation of success in “utilizing [the] varying oscillator frequency”
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`of Gerpheide, in combination with Ingraham I and Caldwell. Id. at 22 (emphasis
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`added). The Board further found that Samsung’s “evidence insufficiently supports .
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`. . comb[ining] Gerpheide’s teaching of varying frequencies . . . with . . . Ingraham
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`I and Caldwell.” Id. at 24 (emphasis added). By repeatedly finding that Samsung
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`failed to prove a reasonable expectation of success in using Gerpheide’s “varying”
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`frequencies, the Board confirmed that it interpreted “selectively providing” to
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`require selection from multiple frequencies. Nothing in the Board’s FWD applied
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`“selectively providing” in a manner inconsistent with selecting from among multiple
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`frequencies—just as the Federal Circuit later construed the term.
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`C. Under the Federal Circuit’s Binding Construction, Samsung Still
`Cannot Prove a Reasonable Expectation of Success
`Because the Federal Circuit’s construction of “selectively providing signal
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`output frequencies” is fully consistent with how the Board applied this term in its
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`FWD, the Federal Circuit’s construction does not change the Board’s analysis of
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`“reasonable expectation of success.” Thus, the Board’s prior finding of no
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`reasonable expectation of success should be affirmed on remand.
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`1.
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`The Board Correctly Found that Samsung Failed to Prove a
`Reasonable Expectation of Success, Applying “Selectively
`Providing” in a Manner Consistent with the Federal
`Circuit’s Construction
`Applying the “selectively providing” term consistently with the Federal
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`Circuit’s construction, the Board found that Samsung’s “evidence insufficiently
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`supports” a finding of reasonable expectation of success. Paper 35 at 24. First, the
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`Board concluded that Samsung’s “contention regarding removal of expensive
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`nulling circuitry” was inadequate, because Samsung did not “address why one
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`reasonably would have expected the combination allowing removal of nulling
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`circuitry to function correctly.” Paper 35 at 23 (emphasis added). Second, the Board
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`concluded that Samsung’s expert, Dr. Subramanian, offered “little persuasive
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`evidence of reasonable expectation of success,” because his “few paragraphs of
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`[relevant] testimony” merely “summarily state [that] one of ordinary skill would
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`have found incorporating Gerpheide ‘to be a predictable and common-sense
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`implementation.’” Id. Third, the Board found that Samsung’s “additional argument”
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`that “Gerpheide’s ‘interference evaluation function 106 is not based on position
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`signals’ [was] insufficiently developed.” Paper 35 at 23.
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`These findings are fully consistent with the evidence in the record. Samsung
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`offered only five paragraphs of Dr. Subramanian’s original and rebuttal declarations
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`in support of its proposed combination. See Ex 1002 (¶¶ 69-72); Ex. 1017 (¶ 14);
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`Paper 2 at 26-29; Paper 24 at 13-14. But nothing in these paragraphs demonstrates
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`that a POSITA would have had a reasonable expectation of success in adding
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`Gerpheide’s variable-frequency,
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`interference-minimization
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`technique
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`to
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`the
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`Ingraham I-Caldwell system. Paragraphs 69 and 70 only address motivation to
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`combine. Paragraph 71 simply describes Gerpheide’s disclosures. Paragraph 72
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`makes the conclusory assertion that a POSITA “would have found such a
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`modification to be . . . predictable and common-sense,” but says nothing about how
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`or why a POSITA would successfully combine Gerpheide with Ingraham-Caldwell.
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`Paragraph 14 of Dr. Subramanian’s rebuttal declaration is equally deficient.
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`First, Dr. Subramanian “disagrees” that “the interference algorithm in Gerpheide
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`would not work in the Ingraham I-Caldwell system.” Ex. 1017, ¶ 14. But this
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`conclusory “disagreement,” without admissible evidence explaining why
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`Gerpheide’s interference algorithm would work in the combination, cannot satisfy
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`Samsung’s burden of proving a reasonable expectation of success in “combin[ing]
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`the teachings of the prior art references to achieve the claimed invention.” Intelligent
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`Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016); In
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`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Second, Dr. Subramanian states that Dr. Cairns (Nartron’s expert) “ignore[d]
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`the embodiment of Gerpheide in which ‘the interference evaluation function 106 is
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`not based on position signals.’” Ex. 1017, ¶ 14. But Dr. Subramanian failed to
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`explain how this embodiment would work “to achieve the claimed invention,”
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`Intelligent Bio-Sys., 821 F.3d at 1367, or why Dr. Cairns should have addressed it.
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`Dr. Cairns had no reason to address this embodiment, because neither Samsung nor
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`Dr. Subramanian relied on it in the Petition, or in the supporting declaration.
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`The Federal Circuit read the Board’s FWD as requiring “that the
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`microcontroller provide different frequencies to different rows of touch pads….”
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`Samsung, 75 Fed. Appx. at 696. But nothing in the Board’s analysis of reasonable
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`expectation of success relied on Gerpheide providing different frequencies to the
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`different rows of touch pads. To the contrary, the Board’s FWD agreed that Dr.
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`Subramanian had failed to explain how Gerpheide “would function successfully” in
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`the Ingraham-Caldwell multi-touch keypad, because Gerpheide selects frequencies
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`“in the context of having all electrodes tied together to form a single electrode.”
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`Paper 35 at 23-24. Both Dr. Subramanian’s failure to explain, and the unworkability
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`of Gerpheide’s “single electrode” frequency selection in an Ingraham-Caldwell
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`multi-touchpad array, remain correct, irrespective of whether the microcontroller
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`provides different frequencies, or the same frequency, to different rows of touch
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`pads. Thus, for the reasons already found—which are fully supported under the
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`Federal Circuit’s claim construction—Samsung failed to prove a reasonable
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`expectation of success, and it still fails to do so.
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`2.
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`Applying the Federal Circuit’s Binding Construction,
`Samsung Still Cannot Prove a Reasonable Expectation of
`Success
`Samsung’s Petition asserted that a POSITA would have combined
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`Gerpheide’s Figure 7 embodiment with the Ingraham-Caldwell multi-touchpad
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`array to achieve the claimed invention. Paper 2 at 26-29; Ex. 1002, ¶¶ 69-72.
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`According to Samsung and its expert, “[i]n such a modified system, the
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`microcontroller would selectively provide more than one frequency . . . by varying
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`the oscillator signal frequency depending on the sensed interference.” 2 Paper 2 at
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`27 (emphasis added). But, under the Federal Circuit’s construction of “selectively
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`providing,” a POSITA would not have reasonably expected to combine the
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`frequency selection technique of this disclosed embodiment with an Ingraham-
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`Caldwell multi-touchpad array, “to achieve the claimed invention.” Intelligent Bio-
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`Sys., 821 F.3d at 1367. This is true for at least two reasons.
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`First, as Dr. Cairns explained, Gerpheide’s interference algorithm “would not
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`2 The embodiment of Gerpheide that changes frequencies based on “sensed
`interference” is shown in Ex. 1012 at Fig. 7, and described therein at col. 8:20-
`9:37. Samsung’s Petition cited only that embodiment of Gerpheide for the
`proposed combination. “It is of the utmost importance that petitioners in the IPR
`proceedings adhere to the requirement that the initial petition identify ‘with
`particularity’ the ‘evidence that supports the grounds for the challenge to each
`claim.’” Intelligent Bio-Sys., 821 F. 3d at 1369 (quoting 35 U.S.C. § 312(a)(3)).
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`work” in the proposed Ingraham-Caldwell multi-touchpad array. Ex. 2010, ¶ 117.
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`Gerpheide’s Figure 7 embodiment maintains a “table of historical interference
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`measurements for each frequency.” Ex. 1012 (9:18-20). These measurements, which
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`Gerpheide calls the “interference measure, IM,” are computed by a very specific
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`algorithm, which is based on the “second differences” of the X, Y, and Z-axis
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`position signals detected by the “mesh” of electrodes. Id., 8:38-9:7. In operation,
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`Gerpheide’s microprocessor scans the table for “[t]he frequency having the lowest
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`interference measure [IM] entry,” and sets that as the active frequency. Id. If, at some
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`point, the microprocessor determines that a different frequency has a lower IM than
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`the current frequency, it sets that as the active frequency. Id.
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`In contrast to Gerpheide’s algorithm, neither Ingraham nor Caldwell detects
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`X, Y, and Z-axis position values. Unlike the continuous “mesh” of electrodes in
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`Gerpheide (Ex. 1012, Fig. 2a), which combines all X- and Y-axis electrodes into a
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`“single” set of “virtual” electrodes (id., 6:1-62), the proposed Ingraham-Caldwell
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`system consists of an array of discrete electrodes. Paper 2 at 19 (asserting that the
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`discrete “[i]nput portions 13” of Ingraham I are the claimed “input touch terminals”).
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`These discrete “input portions” do not output X, Y, and Z-axis position values, as
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`needed to compute Gerpheide’s “second-difference” interference measure (IM). Ex.
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`1012, 8:37-9:5. Rather, Ingraham’s “input portions” output a simple on/off signal,
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`which merely indicates whether a user’s touch caused the “voltage level on base 52”
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`of “transistor 50” to “drop[] sufficiently to establish a forward-biased base emitter
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`junction,” thus “caus[ing] transistor 50 to conduct.” Ex. 1007, 3:21-47. These simple
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`on/off signals could not be used to generate the “X,” “Y” and “Z” position signals
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`needed to compute Gerpheide’s interference measure (IM). Ex. 1012, 8:37-9:5.
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`Samsung offered no evidence as to how a POSITA would modify Gerpheide’s
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`X-, Y-, Z-position-based interference algorithm to work with the Ingraham-Caldwell
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`discrete touch pad array. For this reason alone, Samsung has failed to prove a
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`reasonable expectation of success. See Pers. Web Techs., LLC v. Apple, Inc., 848
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`F.3d 987, 994 (Fed. Cir. 2017) (“a clear, evidence-supported account of the
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`contemplated workings of the combination is a prerequisite to adequately explaining
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`and supporting a conclusion . . . [of] reasonabl[e] expect[ation] of success.”)
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`Second, Gerpheide’s frequency selection technique would not work in the
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`proposed Ingraham-Caldwell system for another reason. Gerpheide uses a
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`synchronous detector to detect touch signals. Ex. 1012, 7:9-25. The synchronous
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`detector is “controlled by the reference frequency signal.” Id. The synchronous
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`detector filters out all signals at frequencies other than the “reference frequency”
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`(i.e., drive frequency). Id.; see also id. at 4:1:20. This is critical to Gerpheide’s noise-
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`avoidance technique. Without a frequency-selective detector, it would be useless for
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`Gerpheide to change drive frequencies to the “lowest noise” frequency, because all
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`noise signals would be passed to the detector, regardless of what drive frequency is
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`used. Thus, Gerpheide’s technique requires use of a frequency-selective detector.
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`Neither Ingraham nor Caldwell uses a frequency-selective detector.
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`Ingraham’s detector circuit simply uses a raw peak detector—“transistor 50,” which
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`senses when a touch causes “the voltage level on base 52 [to] drop[] sufficiently to
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`establish a forward-biased base emitter junction.” Ex. 1007, 3:21-47. This detector
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`will pass any and all noise signals received, and erroneously treat them as a user’s
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`touch, regardless of what drive frequency is used. The same is true of Caldwell,
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`which also uses a raw “peak detector and amplifier circuit,” which will pass all noise
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`signals received, regardless of frequency. Ex. 1009, 6:64-8:12.
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`To function properly, Gerpheide specifies that its frequency-changing method
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`must be used with a frequency-selective detector, tied to the drive frequency. Ex.
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`1012, 4:1-20. But Caldwell and Ingraham I use frequency-agnostic detectors, which
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`pass all received signals – including noise – at any frequency. Samsung has not
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`explained how a POSITA would modify the proposed Caldwell-Ingraham system to
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`use a frequency-selective detector, such as a synchronous detector, as is required for
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`Gerpheide’s technique to work. Samsung also has not explained how, or why, a
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`POSITA would have had a reasonable expectation of success in so modifying a
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`Caldwell-Ingraham touchpad array. Thus, for this additional reason, Samsung has
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`not met its burden of proof to show a reasonable expectation of success.
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`D. The Board Correctly Ruled on Claim 37’s “Supply Voltage”
`1.
`The Board’s Construction Was Correct
`Samsung’s Petition did not propose a construction of claim 37’s “supply
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`voltage.” Paper 17 at 4-5. The Board construed this limitation to mean “a supply
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`voltage of the oscillator.” Paper 12 at 9. The Board’s construction was based on the
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`“context of the supply voltage limitation in this claim,” and “the Specification.” Id.
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`The Board’s construction was correct. Claim 37 contains a list of elements:
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`“an oscillator,’ “a microcontroller,” “a detector circuit,” etc. Each element is
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`separated from the preceding element by a colon or semicolon. The words between
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`each pair of colons or semicolons describe a single element. Thus, “supply voltage”
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`modifies “oscillator,” and means: “supply voltage of the oscillator.”
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`After the Board issued its construction, Samsung moved for rehearing. See
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`Paper 14. Samsung argued that “supply voltage” should be construed to mean any
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`“supply voltage”—including the supply voltage of the microprocessor. Id. at 8-9.
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`The Board denied rehearing. Paper 17. The Board held that the “basic
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`grammar” of the claim, as well as the specification, supported its prior construction.
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`Id. at 5. The Board considered every argument that Samsung raised in its 9-page
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`petition for rehearing and rejected them all. Id. at 4-7.
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`The Board has already ruled, multiple times—and correctly—that “supply
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`voltage” means “supply voltage of the oscillator.” There is no reason for the Board
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`1722443
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`14
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`to depart from that ruling. Thus, the Board’s construction should be maintained.
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`Case IPR2016-00908
`Patent No. 5,796,183
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`2.
`The Board Applied Its Construction Properly
`The Board concluded that, under its construction, Samsung failed to prove
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`that claim 37’s “supply voltage” was present in the asserted prior art. Paper 12 at 15-
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`16. Samsung identified the claimed “oscillator” as Ingraham’s “115 V 60 Hz AC
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`power source derived from the power line providing electricity.” Paper 2 at 15. In
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`other words, Samsung identified the “oscillator” as the oscillator in the power plant
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`or transformer, which supplies 115V 60 Hz AC over a power line. Samsung
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`identified the claimed “oscillator voltage” as the “115 V” voltage of this oscillator.
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`Paper 2 at 19. Thus, under the Board’s construction, the relevant “supply voltage” is
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`the voltage supplied to the oscillator in the power plant or transformer.
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`As the Board correctly found, Samsung adduced no evidence that the supply
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`voltage to the oscillator in a power plant or transformer is greater than the 115 V
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`output by that oscillator. Paper 12 at 15-16. Thus, as the Board correctly found,
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`Samsung failed to prove that all elements of claim 37 were known in the prior art.
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`The Board’s findings were correct. At this stage, Samsung may not adduce
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`new evidence to show that claim elements were known in the prior art. See August
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`2018 Practice Guide at 14. Thus, the Board should enter a Final Written Decision
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`affirming that Samsung has not proven obviousness as to claims 37-39.
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`Dated: October 3, 2019
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`By:
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`Case IPR2016-00908
`Patent No. 5,796,183
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`Respectfully submitted,
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`/s/ Stephen Underwood
`Stephen Underwood (Reg. # 77,977)
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`Lawrence M. Hadley (pro hac vice
`admission pending)
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`GLASER WEIL FINK HOWARD
`AVCHEN & SHAPIRO LLP
`520 Newport Center Drive, Suite 420
`Newport Beach, CA 92660
`Tel: (949) 287-6890
`Fax: (949) 873-5495
`sunderwood@glaserweil.com
`lhadley@glaserweil.com
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`Counsel for Patent Owner
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`Case IPR2016-00908
`Patent No. 5,796,183
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
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`indicated below, a complete and entire copy of the foregoing PATENT OWNER’S
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`BRIEF IN RESPONSE TO PAPER NUMBER 41 was served by email on the
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`following counsel of record in this matter:
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`Attorneys for Petitioner Samsung:
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` Naveen Modi (naveenmodi@paulhastings.com)
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` Joseph E. Palys (josephpalys@paulhastings.com)
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` Chetan R. Bansal (chetanbansal@paulhastings.com)
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`Dated: October 3, 2019
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`Respectfully submitted,
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`By: /s/ Stephen Underwood
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`Stephen Underwood
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`Reg. No. 77,977
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`Counsel for Patent Owner
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