Paper No. 51
`Filed: October 16, 2020
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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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`____________________
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`Case IPR2016-00908
`Patent No. 5,796,183
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`____________________
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`PATENT OWNER’S NOTICE OF APPEAL
`PURSUANT TO 37 C.F.R. § 90.2(a)
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`1911144
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`Filed: October 16, 2020
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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 NOTICE OF APPEAL
`PURSUANT TO 37 C.F.R. § 90.2(a)
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`1911144
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`Case IPR2016-00908
`Patent No. 5,796,183
`Pursuant to 35 U.S.C. §§ 141(c) and 319, and 37 C.F.R. § 90.2(a), notice is
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`hereby given that Patent Owner UUSI, LLC d/b/a Nartron (“Nartron”) appeals to the
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`United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision in Case No. IPR2016-00908 entered on September 17, 2020 (Paper 50)
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`(“Final Written Decision” or “FWD”) by the Patent Trial and Appeal Board (“the
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`Board”), and from all underlying orders, decisions, rulings, and opinions related
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`thereto and included therein, to the extent that such were decided against Nartron.
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`This appeal is timely under 35 U.S.C. § 142, 37 C.F.R. § 90.3, and Rule
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`15(a)(1) of the Federal Rules of Appellate Procedure.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues that Nartron may raise
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`in this appeal include, but are not necessarily limited to:
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`(1) The Board’s erroneous determination that a person of ordinary skill
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`in the art (“POSITA”) would have had a motivation to combine U.S. Pat. No.
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`5,087,825 to Ingraham (“Ingraham I”) with U.S. Pat. No. 5,594,222 to
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`Caldwell (“Caldwell”) (see, e.g., FWD at 32);
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`(2) The Board’s failure to explain whether and why a POSITA would
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`have had a reasonable expectation of success in combining Ingraham I with
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`Caldwell, where Nartron specifically challenged the asserted Ingraham
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`I/Caldwell combination on that ground (see Paper 21 at 27-30);
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`(3) The Board’s unexplained erroneous apparent determination that a
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`Case IPR2016-00908
`Patent No. 5,796,183
`POSITA would have had a reasonable expectation of success in combining
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`Ingraham I with Caldwell;
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`(4) The Board’s erroneous determination that a POSITA would have
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`had a reasonable expectation of success in combining U.S. Pat. No. 5,565,658
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`to Gerpheide (“Gerpheide”) with Ingraham I and Caldwell (FWD at 26-27);
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`(5) The Board’s erroneous determination that Petitioner’s asserted
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`combination of Ingraham I, Caldwell and Gerpheide meets all the elements of
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`claims 40, 41, 43, 45, 61, 64–67, 69, 83, 85, 86, 88, 90, 91, 94, 96, 97, 99,
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`101, and 102 (FWD at 28-53);
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`(6) The Board’s erroneous determination that claims 40, 41, 43, 45, 61,
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`64–67, 69, 83, 85, 86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are obvious
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`over Ingraham I, Caldwell and Gerpheide (FWD at 28-53);
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`(7) The Board’s erroneous determinations that a POSITA would have
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`had: (i) a motivation to combine Gerpheide, Ingraham I and Caldwell with
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`U.S. Pat. No. 5,341,036 to Wheeler (“Wheeler”); and (ii) a reasonable
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`expectation of success in making such a combination (FWD at 53-55);
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`(8) The Board’s erroneous ruling that claims 47, 48, 62, 63, and 84 are
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`obvious over Ingraham I, Caldwell, Gerpheide and Wheeler (FWD at 53-58);
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`(9) The Board’s erroneous claim constructions, whether explicit or
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`implicit, to the extent that they led the Board to erroneously conclude that any
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`Case IPR2016-00908
`Patent No. 5,796,183
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`challenged claim was obvious;
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`(10) The Board’s erroneous interpretations of the ‘183 patent or the
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`cited prior art, whether explicit or implicit, to the extent that they led the Board
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`to erroneously conclude that any challenged claim was obvious; and
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`(11) All other issues decided adversely to Nartron in any orders,
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`decisions, rulings, and opinions underlying or supporting the FWD.
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`Per 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a)(1), this notice is being filed with
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`the Director of the U.S. Patent and Trademark Office, and a copy is also being filed
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`with the Board. Per Federal Circuit Rule 15(a)(1) and 37 C.F.R. § 90.2(a)(2),
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`Nartron is also filing this notice with the clerk of the Court of Appeals for the Federal
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`Circuit, and paying the appeal fee set forth in Federal Circuit Rule 52.
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`Dated: October 16, 2020
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`By:
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`1911144
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`3
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`Respectfully submitted,
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`/s/ Stephen Underwood
`Stephen Underwood (Reg. # 77,977)
`Lawrence M. Hadley (pro hac vice
`admission pending)
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`GLASER WEIL FINK HOWARD
`AVCHEN & SHAPIRO LLP
`10250 Constellation Blvd., 19th Floor
`Los Angeles, California 90067
`Telephone: (310) 553-3000
`Facsimile: (310) 556-2920
`Email: sunderwood@glaserweil.com
`Email: lhadley@glaserweil.com
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`Counsel for Patent Owner
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`
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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 this submission is being provided
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`by email to Petitioner’s counsel, at the addresses of record set forth below:
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`Naveen Modi
`Joseph Palys
`Chetan Bansal
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`Paul Hastings LLP
`875 15th St N.W.
`Washington, DC 20005
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`Email:
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`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
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`The undersigned further certifies that, in addition to being filed electronically
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`through the Board’s E2E System, a copy of the foregoing Notice of Appeal is being
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`filed by hand on October 16, 2020 with the Director of the United States Patent and
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`Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`The undersigned further certifies that, on October 16, 2020, a copy of the
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`foregoing Notice of Appeal, along with a copy of the Final Written Decision, is being
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`filed electronically with the Clerk’s Office of the United States Court of Appeals for
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`1911144
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`the Federal Circuit, at the following address:
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`Case IPR2016-00908
`Patent No. 5,796,183
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005.
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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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`Dated: October 16, 2020
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`1911144
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