Paper No. _____
`Filed: October 17, 2019
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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 REPLY TO PETITIONER’S
`OPENING BRIEF ON REMAND (PAPER NO. 43)
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`Case IPR2016-00908
`Patent No. 5,796,183
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`I.
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`Reply to Samsung’s Arguments on Reasonable Expectation of Success
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`To prevail, Samsung must prove a “likelihood of success in combining [the]
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`references to meet [all] the limitations of the claimed invention.” Intelligent Bio-
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`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Here,
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`all challenged claims recite “selectively providing signal output frequencies,” which
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`the Federal Circuit has construed to mean “provid[ing] a frequency, selected from
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`multiple possible frequencies, to the entire touch pad.” Samsung Elecs. Co. v. UUSI,
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`LLC, 775 F. App'x 692, 697 (Fed. Cir. 2019). For “selecting” a frequency “from
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`multiple possible frequencies,” Samsung relies solely on Gerpheide, as depicted in
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`Gerpheide at Fig. 7, and described at 8:20-9:37. See Paper 2 at 26-29; Ex. 1002, ¶¶
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`69-72. Thus, Samsung must prove that a POSITA would have reasonably expected
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`success in combining Gerpheide’s Figure 7 embodiment with the Ingraham-
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`Caldwell array, to “selectively provide” from multiple possible frequencies.1
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`A POSITA would not have expected such success, because: (i) Gerpheide’s
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`Figure 7 frequency-shifting technique requires X-Y-Z position signals, but
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`Caldwell-Ingraham’s discrete touch pads cannot generate such position signals2
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`1 Samsung cannot now assert that a POSITA would have generally expected success
`in modifying Ingraham-Caldwell to “select” frequencies in some random way,
`wholly unconnected from the way Gerpheide changes frequencies. See, e.g., Intendis
`GMBH v. Glenmark Pharm. Ltd., 117 F. Supp. 3d 549, 591 (D. Del. 2015) (“The
`court was not presented with testimony or other evidence regarding the expectation
`of success . . . in the specific combination(s)-at-issue and, therefore, cannot
`conclude that defendants have carried their burden in this regard”) (emphasis added).
`2 Samsung asserts that Dr. Cairns’s testimony on this issue, set forth in Paragraph
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`Case IPR2016-00908
`Patent No. 5,796,183
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`(Paper 44 at 10-12); and (ii) Gerpheide’s frequency-shifting technique requires a
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`frequency-selective detector, but the Ingraham-Caldwell array uses frequency-
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`agnostic peak detectors. Id. at 12-13. Samsung adduced no evidence to explain how
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`a POSITA would overcome these problems in the alleged combination. Thus,
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`Samsung has not met its burden of proving a reasonable expectation of success.
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`Although Samsung has the burden to prove obviousness, Samsung never
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`offers an evidence-based reason why a POSITA would reasonably expect to
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`combine Gerpehide’s frequency-shifting in a single continuous array with Caldwell-
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`Ingraham’s discrete terminals, to achieve “the claimed invention.” Rather, Samsung
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`merely challenges Nartron’s reasons why a POSITA would not have expected such
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`success. Even then, Samsung’s arguments regarding Nartron’s evidence fail.
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`First, Samsung asserts that Nartron’s evidence establishing the absence of a
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`reasonable expectation of success improperly rests on “bodily incorporation” of
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`Gerpheide into Ingraham-Caldwell. Paper 43 at 4-5. But Nartron makes no such
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`“bodily incorporation” argument. Rather, Nartron’s evidence shows that a POSITA
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`would not reasonably expect Gerpheide’s single-array frequency shifting to
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`“selectively provide” frequencies in Ingraham-Caldwell, in a way that could be
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`117 of his Rebuttal Declaration (Ex. 2010), was inadequately developed. Paper 43
`at 4-5. But Dr. Cairns plainly raised this point. In any event, the Board did not limit
`the parties on remand to their experts’ prior testimony verbatim, so long as the parties
`do not submit “any additional evidence.” Paper 41 at 7 (emphasis added).
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`detected in the challenged claims. Paper 44 at 6-13.
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`Moreover, other claim language confirms that frequencies cannot be
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`“selectively provided” at random, but must be “selectively provided” to “decrease a
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`first impedance of said dielectric substrate relative to a second impedance of any
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`contaminate that may create an electrical path,” in order to minimize crosstalk
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`between adjacent terminals. Ex. 1001, claims 40 and 61.3 Gerpheide’s frequency-
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`selection technique does not decrease the impedance of a substrate, relative to the
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`impedance of a contaminant path, to reduce crosstalk. Indeed, Gerpheide’s technique
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`does not work to reduce crosstalk between terminals, because Gerpheide has a single
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`continuous array of touch electrodes, rather than discrete terminals (see Ex. 1012,
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`Fig. 2a), and its interference measure would not sense the presence of contamination.
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`Thus, a POSITA would not expect success in combining Gerpheide with Caldwell-
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`Ingraham to achieve “the claimed invention.” Illumina, 821 F.3d at 1367.
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`Second, Samsung argues that Nartron “admitted,” in a reexamination, that a
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`POSITA would reasonably expect success. Paper 43 at 5-6. Not so. In Reexam
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`90/013,106, Nartron alleged a substantial new question of patentability (SNQ) as to
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`claim 18 of the ‘183 patent—now cancelled—in view of U.S. Pat. No. 5,463,388 to
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`3 While independent claims 37, 83 and 94 do not expressly recite this element, they
`do recite “selectively providing signal output frequencies.” Meanwhile, the
`specification explains that the purpose of “selecting” a particular output frequency
`is to achieve a “reduction in crosstalk,” which enables “the touch terminals in the
`array to be more closely spaced together” than in the prior art. Ex. 1001, 18:66-19:6.
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`Boie (Ex. 1006 at 521-532) and Gerpheide. To establish the statutorily-required
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`SNQ (35 U.S.C. § 303(a)), Nartron represented that there was an SNQ of
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`obviousness over Boie and Gerpheide. Ex. 1006 at 329-332. Nartron’s statement of
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`an SNQ as to claim 18 was not a binding admission that every claim ever issuing in
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`the Reexamination would ultimately be obvious. And, after seeing Nartron’s SNQ,
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`the USPTO issued 78 new claims. Ex. 1001, claims 40-117. Thus, the USPTO
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`understood that Nartron had not “admitted” obviousness as to any claims.
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`Moreover, a patentee’s statement in a reexam petition, intended to establish a
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`mere SNQ, is not considered an admission that the claims are invalid. See In re
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`Laughlin Prod., Inc., 265 F. Supp. 2d 525, 533–34 (E.D. Pa. 2003). Indeed, in this
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`very matter, the Federal Circuit agreed—effectively rejecting Samsung’s 15 page
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`argument that Nartron’s reexam statements constituted an “admission” of
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`obviousness. See CAFC Case No. 2018-1310, Dkt. No. 20 at 1-2, 4, 19, 24, 34, 37,
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`39-41; Case No. 2018-1310, Dkt. No. 35 at 1, 11-16; Samsung, 775 Fed. App’x at
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`697. If Nartron’s SNQ statement had been considered a binding admission, the
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`Federal Circuit would not have remanded on the reasonable expectation issue.4
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`4 In any event, a reasonable expectation of success in combining Boie with
`Gerpheide would not a establish a reasonable expectation in combining Caldwell-
`Ingraham with Gerpheide. Like Gerpheide, Boie uses a continuous “mesh” of
`electrodes, which output a signal representing “[t]he x and y coordinates of the”
`user’s finger. See Ex. 1006 at 523 (Fig. 3), 529, 3:5-15. Thus, Gerpheide’s “X-Y”
`interference algorithm might be implementable in Boie. This is not true of Caldwell-
`Ingraham, because Caldwell-Ingraham uses discrete touchpads. Similarly, Boie uses
`a “[s]ynchronous detector and filter.” Id. at 3:63-4:12. Thus, Gerpheide’s noise-
`avoidance scheme might be implementable in Boie. This is not true of Caldwell-
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`II. Reply to Samsung’s Arguments on “Supply Voltage” (Claim 37)5
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`Samsung argues that claim 37’s “supply voltage” can be the voltage supplied
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`to any circuit component, rather than just the voltage supplied to the oscillator. This
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`construction conflicts with the specification and makes no sense.
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`First, Samsung asserts that the specification supports its construction because
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`the 21V square wave on line 301 is the “supply voltage” to the microcontroller. Paper
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`43 at 11. Wrong. The 21V square wave on line 301 is the floating ground (low)
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`supplied to the microcontroller. The power supply (high) voltage to the
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`microcontroller is provided on line 201. Line 201 carries the 26V output of the
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`oscillator. Ex. 1001, 12:5-13. This 26V output voltage is supplied to all key
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`components of the ‘183 system—floating ground generator 300, touch circuit 400,
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`and microcontroller 500. Id., Fig. 4. Thus, in the ‘183 patent, the supply voltage to
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`components other than the oscillator equals the output voltage of the oscillator.
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`Second, Samsung’s construction would broaden the claims to cover a voltage
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`supplied to any system component that happens to be less than the oscillator’s output
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`voltage. This would make the limitation meaningless and wholly divorced from the
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`invention. Thus, the Board’s prior decision on claims 37-39 should be affirmed.
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`Ingraham, because Caldwell-Ingraham uses raw peak detectors.
`5 Nartron’s Opening Brief contains a typographical error on this point. It states:
`“Samsung adduced no evidence that the supply voltage to the oscillator in a power
`plant or transformer is greater than the 115V output by that oscillator.” Paper 44 at
`15. Here, “greater than” should read “less than.” With that, the statement is accurate.
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`Dated: October 17, 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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`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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`REPLY TO PETITIONER’S OPENING BRIEF ON REMAND (PAPER NO. 43)
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`was served by email on the 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 17, 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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