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`Paper No.
`Filed: October 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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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`Petitioner’s Response Brief on Remand
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`Case No. IPR2016-00908
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`TABLE OF CONTENTS
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` Page
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`I.
`INTRODUCTION ........................................................................................... 1
`II. ARGUMENT ................................................................................................... 1
`A. UUSI’s Attorney Arguments Cannot Remedy Its Declarant’s
`Failure to Address Reasonable Expectation of Success Under
`the Proper Test ....................................................................................... 1
`“Supply Voltage” in Claim 37 Should Not Be Limited To the
`Oscillator Supply Voltage ..................................................................... 4
`III. CONCLUSION ................................................................................................ 5
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`B.
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`i
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`I.
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`Case No. IPR2016-00908
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`INTRODUCTION
`Petitioner Samsung submits the following reply to UUSI’s Opening Brief on
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`Remand (Paper No. 441). UUSI argues that there would not have been a reasonable
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`expectation of success in combining the teachings of Gerpheide with the Ingraham
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`I-Caldwell combination and that the Board correctly construed “supply voltage” in
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`claim 37. Both those arguments fail, as explained below.
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`II. ARGUMENT
`A. UUSI’s Attorney Arguments Cannot Remedy Its Declarant’s
`Failure to Address Reasonable Expectation of Success Under the
`Proper Test
`With respect to reasonable expectation of success, the question is whether a
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`POSITA would have been able to modify the Ingraham I-Caldwell combination such
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`that the the combination selects a frequency from multiple frequencies and provides
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`the selected “frequency” to the entire touch pad. (Paper 43 at 2-6.) While Dr.
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`Subramanian (Samsung’s expert) testified that a POSITA would have been able to
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`do so, UUSI’s declarant (Dr. Cairns) simply did not opine on this issue. (Id.; Ex.
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`2010 at ¶¶ 115-118.) Unsurprisingly then, UUSI’s entire argument on this issue
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`includes one citation to its declarant. (Paper 44 at 11 (citing Ex. 2010 at ¶117).)
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`1 UUSI’s brief fails to comply with the 15 page limit set by the Board’s September
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`15, 2019 Order (Paper 41) as it includes two single spaced footnotes in violation of
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`37 C.F.R. § 42.6(a)(iii). (See Paper 44 at 4, 12.)
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`And even that testimony only alleges that Gerpheide’s algorithm “would not work”
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`Case No. IPR2016-00908
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`in the Ingraham I-Caldwell combination, which is irrelevant to the issue at hand
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`because, per the test set forth by the Federal Circuit, Samsung need not prove that
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`Gerpheide’s algorithm would work in the Ingraham I-Caldwell combination.
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`Lacking any supporting testimony, UUSI turns to entirely new attorney
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`arguments to support its position. (Paper 44 at 10-13.) But ‘“attorney argument is
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`not evidence’ and cannot rebut other admitted evidence” (e.g., Dr. Subramanian’s
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`undisputed testimony). Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d
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`1354, 1359 (Fed. Cir. 2018). Regardless, even if these attorney arguments are
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`considered, they lack merit. For instance, UUSI argues that Ingraham’s touch
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`terminals only output an on/off signal in response to user touch and thus do not
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`output “X, Y, and Z-axis position values” like in Gerpheide. (Paper 44 at 11-12.)
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`Therefore, per UUSI, a POSITA could not have modified “Gerpheide’s X-, Y-, Z-
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`position-based interference algorithm to work with the Ingraham I-Caldwell discrete
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`touch pad array.” (Id. at 12.) This argument fails for two reasons.
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`First, like its arguments for motivation to combine, which the Federal Circuit
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`rejected, Samsung Elecs., 775 F. App'x at 695-96, UUSI attacks the references
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`individually, focusing on their physical distinctions. UUSI ignores that Samsung
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`need not show that Gerpheide’s interference algorithm works in an identical manner
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`as Ingraham I or that Gerpheide’s interference algorithm can be bodily incorporated
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`2
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`into the Ingraham I-Caldwell combination. Allied Erecting & Dismantling Co., v.
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`Case No. IPR2016-00908
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`Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016).
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`Second, this argument is untethered from the proper test for reasonable
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`expectation of success because it focuses on the touch terminals in these references
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`as opposed to the capability of the microcontroller; thus, the argument does not
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`address a POSITA’s ability to modify the Ingraham I-Caldwell combination such
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`that the microcontroller selects a frequency from multiple frequencies and provides
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`the selected frequency to the touch pad array. Indeed, such a modification only
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`requires changing the oscillator frequency, which a microcontroller was capable of
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`doing at the time of the alleged invention, as confirmed by Gerpheide’s teachings.
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`(Ex. 1012, Figs. 4 7, 6:5-8, 6:19-26, 8:22-9:33; Ex. 1002, ¶¶69-72.)
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`UUSI next contends that Gerpheide’s frequency-changing method requires a
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`“frequency-selective detector” while Caldwell and Ingraham I utilize “frequency-
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`agnostic detector.” (Paper 44 at 12-13.) First, this is new attorney argument that
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`has no evidentiary basis in UUSI’s testimonial evidence, and hence, must be
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`rejected. Second, UUSI attacks the references individually and presumes that
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`reasonable expectation of success requires “Gerpheide’s frequency selection
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`technique” to “work in the proposed Ingraham-Caldwell system.” (Id. at 12.) But
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`obviousness does not require bodily incorporation of the teachings of one reference
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`into another. UUSI’s argument further fails because the claims do not recite a
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`3
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`frequency detector, and reasonable expectation must only be shown for “what is
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`Case No. IPR2016-00908
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`claimed.” Samsung Elecs., 775 F. App'x at 696 (emphasis in original). 2
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`B.
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`“Supply Voltage” in Claim 37 Should Not
`Be Limited To the Oscillator Supply Voltage
`As explained in Petitioner’s Opening Brief on Remand, “supply voltage” as
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`recited in claim 37 should not be limited to the oscillator supply voltage. (Paper 43
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`at 7-13.) UUSI contends that “supply voltage” should be so limited because each
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`element of claim 37 (e.g., “oscillator,” “microcontroller”) is separated by a colon or
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`2 The arguments in the initial few pages of UUSI’s brief are either irrelevant or
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`addressed by Samsung’s Opening Brief on Remand (Paper 43). UUSI’s arguments
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`are irrelevant insofar as it contends that the Federal Circuit construed the “selectively
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`providing” limitation as requiring selection of a frequency from multiple frequencies
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`and that this construction is consistent with the Board’s final decision. (Paper 44 at
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`3-6.) The Federal Circuit found that the Final Decision did not address the proper
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`test for reasonable expectation of success and thus remanded the case to the Board.
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`Samsung Elecs., 775 F. App'x at 696-97. Moreover, UUSI’s contention that the
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`construction is supported by the specification (Paper 44 at 4, n.1.) is incorrect. (Pet.
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`at 26, n.6; Paper 43 at 4, n.2.) As for UUSI’s contention that Samsung’s testimonial
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`evidence cannot demonstrate reasonable expectation of success under the proper test
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`(Paper 44 at 7-9), that is simply incorrect (Paper 43 at 2-3).
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`4
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`semicolon and “[t]he words between each pair of colons or semicolons describe a
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`Case No. IPR2016-00908
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`single element.” (Paper 44 at 14.) Thus, according to UUSI, because “supply
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`voltage” occurs in the “oscillator” limitation, “supply voltage” must be describing
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`the oscillator supply voltage. (Id.) Respectfully, that argument makes little sense.
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`For instance, the “microcontroller” limitation in claim 37 recites “a microcontroller
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`. . . selectively providing signal output frequencies to a . . . keypad . . . .” (Ex. 1001
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`at 35 (2:48-52).) Under UUSI’s logic, “keypad” must mean “keypad of the
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`microcontroller” because “keypad” is recited in the “microcontroller” limitation.
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`But the ’183 patent specification and claims make clear that the claimed “keypad”
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`(which includes the “input touch terminals”) is separate from the “microcontroller”
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`given that the “microcontroller” provides signals to the touch terminals (e.g., 9001,
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`9002) making up the keypad. (Ex. 1001 at 35 (2:48-52), FIG. 11, 18:34-48.) Indeed,
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`there is no disclosure in the ’183 patent of a microcontroller keypad. UUSI has thus
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`not offered any persuasive reason for the Board to maintain its preliminary
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`construction of “supply voltage.” Because UUSI’s sole argument for claims 37-39
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`rests on the Board maintaining its construction of “supply voltage,” which Samsung
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`has shown to be incorrect, claims 37-39 should be found unpatentable.
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`III. CONCLUSION
`The challenged claims should be found unpatentable and canceled.
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`5
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`Case No. IPR2016-00908
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`Dated: October 17, 2019
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi
` Reg. No. 46,224
` Counsel for Petitioner Samsung
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`6
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`Case No. IPR2016-00908
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
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`Response Brief on Remand by electronic means on the date below at the following
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`address of record:
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`sunderwood@glaserweil.com
`jweir@glaserweil.com
`lhadley@glaserweil.com
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`Dated: October 17, 2019
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi
` Reg. No. 46,224
` Counsel for Petitioner Samsung
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