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`Paper No.
`Filed: November 2, 2016
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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 Request for Rehearing Under 37 C.F.R. § 42.71(d)(1)
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`I.
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`Case No. IPR2016-00908
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`TABLE OF CONTENTS
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` Page
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`STATEMENT OF THE PRECISE RELIEF REQUESTED.........................1
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`LEGAL STANDARD ...............................................................................1
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ......................2
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`A.
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`The Board Erred in Its Construction of “a Supply Voltage” in
`Claim 37 .........................................................................................3
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`1.
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`2.
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`The Board Improperly Read a Limitation from the
`Specification into Claim 37 ....................................................4
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`The Board’s Construction Is Not Supported by Other
`Claims ...................................................................................7
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`3.
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`The Board Should Give “Supply Voltage” Its Plain and
`Ordinary Meaning ..................................................................8
`The Board Erred in Denying Institution of Claims 37-39 Based
`on Its Construction...........................................................................8
`IV. CONCLUSION .........................................................................................9
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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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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Petitioner Samsung Electronics Co. Ltd. requests rehearing of the Patent
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`Trial and Appeal Board’s Decision entered October 19, 2016 (Paper 12,
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`“Decision”) denying institution of inter partes review for claims 37-39 of U.S.
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`Patent No. 5,796,183 (“the ’183 patent”).
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` The Board overlooked and
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`misapprehended evidence of record when it denied institution for claims 37-39
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`based on an unreasonably narrow construction of the claim term “a supply voltage”
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`recited in claim 37. For the reasons set forth below, Petitioner requests rehearing
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`of the Board’s construction of this term and its decision not to institute inter partes
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`review of claims 37-39 based on its construction.
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`II. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing.”
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`37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” Id.
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`Institution decisions are reviewed on rehearing for an abuse of discretion.
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`See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s
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`based on an erroneous conclusion of law or clearly erroneous factual findings,
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`or . . . a clear error of judgment.” Apple Inc. v. DSS Technology Management, Inc.,
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`IPR2015-00369, Paper No. 14 at 3 (August 12, 2015) (citing PPG Indus. Inc. v.
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`Case No. IPR2016-00908
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`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Petitioner respectfully requests rehearing of the Board’s decision to deny
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`institution of claims 37-39. (Decision at 15-16.) The Board’s sole reason for
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`denying institution for claims 37-39 stems from the Board’s construction of the
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`term “a supply voltage” in claim 37 (id. at 16), which recites, inter alia, “an
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`oscillator providing a periodic output signal having a predefined frequency,
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`wherein an oscillator voltage is greater than a supply voltage.” According to the
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`Board, “one of ordinary skill in the art would understand the term . . . ‘supply
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`voltage’ as referring to a supply voltage of the oscillator.” (Id. at 9.) That is, the
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`Board construed claim 37 as reciting, inter alia, “an oscillator providing a periodic
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`output signal having a predefined frequency, wherein an oscillator voltage is
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`greater than a supply voltage of the oscillator.” Based on this construction, the
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`Board denied institution because the Petition relies on the supply voltage of a
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`microcontroller and not the oscillator for the “supply voltage” limitation of claim
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`37. (Id. at 15-16.) However, as explained below, the Board overlooked and
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`misapprehended evidence of record that demonstrates that the Board’s construction
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`of “a supply voltage” in claim 37 improperly limits the scope of claims 37-39 to
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`particular aspects, while excluding others. Therefore, Petitioner respectfully
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`2
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`requests that the Board reconsider its interpretation of the claimed “a supply
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`Case No. IPR2016-00908
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`voltage” in claim 37 and its analysis of Petitioner’s ground as to claims 37-39 as
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`set forth in the Petition.
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`A. The Board Erred in Its Construction of “a Supply Voltage” in
`Claim 371
`Claim 37 recites, inter alia, “an oscillator providing a periodic output signal
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`having a predefined frequency, wherein an oscillator voltage is greater than a
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`supply voltage.” (Ex. 1001 at 35 (2:45-47).) The Board’s construction that “a
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`supply voltage” as recited in claim 37 is limited to “a supply voltage of the
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`oscillator” is incorrect in view of the intrinsic evidence.
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`1 Below, Petitioner discusses the specification of the ’183 patent (Ex. 1001) that is
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`evidence of record that the Board relied upon to support its construction of “a
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`supply voltage” in claim 37. In doing so, Petitioner is not raising new arguments,
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`but instead merely addresses the Board’s construction in the Decision and
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`demonstrates how the Board overlooked and misapprehended evidence of record in
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`interpreting this term, which the Board relies upon to deny institution of claims 37-
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`39. As the Board recognized, Petitioner did not present a construction of the
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`claimed “a supply voltage” (Decision at 8), and thus the Petition relied on the
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`term’s plain and ordinary meaning (Paper 2 at 11-15).
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`Case No. IPR2016-00908
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`1. The Board Improperly Read a Limitation
`Specification into Claim 37
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`from
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`the
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`The Board unreasonably narrowed the scope of “a supply voltage” by
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`reading a limitation from a disclosed embodiment into claim 37. Specifically,
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`claim 37 does not specify or limit whether the claimed “a supply voltage” is
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`limited to a voltage associated with a particular component recited in the claim
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`(e.g., a microcontroller, first and second touch terminals, detector circuit, or
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`oscillator). The Board, however, construed and thus limited “a supply voltage” as
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`the “supply voltage of the oscillator” because, according to the Board, “[s]uch an
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`understanding is consistent with the Specification, which discloses voltage
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`regulator 100 provides supply voltages 104, 105, and 106 to oscillator 200.”
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`(Decision at 9, citing Ex. 1001, 11:64-12:29, Figs. 4, 5.) But it is improper to read
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`limitations from embodiments described in the specification into the claims
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`“absent a clear indication in the intrinsic record that the patentee intended the
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`claims to be so limited.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304,
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`1309 (Fed. Cir. 2014), reh’g denied (June 17, 2014) (citations omitted). Here, the
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`intrinsic evidence provides no indication to limit “a supply voltage” to a supply
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`voltage of the oscillator because “a supply voltage” can refer to the supply voltage
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`of other components (e.g., the microcontroller). In fact, as discussed below, the
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`specification supports a broader scope for “supply voltage” to include the supply
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`voltage of, for example, a microcontroller.
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`4
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`Specifically, with respect to Figure 4, the ’183 patent explains that
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`“[v]oltage regulator 100 converts the received AC voltage to a DC voltage and
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`supplies a regulated 5 V DC power to an oscillator 200 via lines 104 and 105. (Id.
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`at 11:67-12:2.) The specification also explains that “[v]oltage regulator also
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`supplies oscillator 200 with 26 V DC power via line 106.” (Id. at 12:2-3.) That is,
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`oscillator 200 receives a 5V and a 26V supply voltage. The specification goes on
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`to explain that “oscillator 200 generates a square wave . . . having an amplitude of
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`26 V peak.” (Id. at 12:6-8; see also id. at FIG. 4 (showing lines 104, 105, 106 and
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`output line 201).) That is, oscillator 200 outputs a 26V signal. Based on the above
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`disclosure in the ’183 patent that the 26 V oscillator output (“oscillator voltage”)
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`on line 201 is greater than the 5 V signal supplied to oscillator 200 by lines 104
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`and 1052, the Board limited “a supply voltage” to a supply voltage of the oscillator.
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`(Decision at 93, citing Ex. 1001, 11:64-12:29, Figs. 4, 5.) But the Board
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`overlooked the fact that both microcontroller 500 and voltage regulator 100 also
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`have a “supply voltage” that is less than the oscillator output voltage.
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`2 Claim 37 recites that “an oscillator voltage is greater than a supply voltage.”
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`3 The 26V signal on line 106 cannot correspond to the claimed “supply voltage”
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`because the oscillator output on line 201 (26V) is not greater than the 26V signal
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`on line 106.
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`For instance, the discussion of Figure 4 in the ’183 patent discloses that the
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`output voltage of floating common generator 300, which is “5 volts below the
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`[26V] square wave output from oscillator 200 . . . provide[s] power to touch circuit
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`400 and microcontroller 500.” (Ex. 1001 at 12:13-22 (emphasis added), FIG. 4
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`(line 301).) The embodiment of Figure 11 retains this aspect of the Figure 4
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`embodiment. (Id. at 18:34-43; compare id. at FIG. 4, with FIG. 11.) Therefore, in
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`both the Figure 4 and Figure 11 embodiments, the 21V output of floating common
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`generator 300 is a “supply voltage” for microcontroller 500. Because the oscillator
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`output voltage (i.e., 26V on line 201) is greater than the microcontroller 500 supply
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`voltage (i.e., 21V on line 301), the microcontroller 500 supply voltage satisfies the
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`requirement of claim 37 that “an oscillator voltage is greater than a supply
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`voltage.” The ’183 patent also explains that voltage regulator 100 includes “input
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`lines 101 and 102 for receiving a 24 V AC line voltage.” (Ex. 1001 at 11:64-66,
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`FIG. 4.) The oscillator 200 output voltage (i.e., 26V on line 201) disclosed in
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`connection with Figure 4 is also greater than the 24V supply voltage provided on
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`lines 101 and 102 as a result of which the voltage regulator 100 “supply voltage”
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`also satisfies the requirement of claim that “an oscillator voltage is greater than a
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`supply voltage.” Therefore, the ’183 patent discloses a supply voltage for each of
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`microcontroller 200 and voltage regulator 100 that complies with the plain
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`language of claim 37.
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`Case No. IPR2016-00908
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`Accordingly, in limiting the “supply voltage” to the supply voltage of an
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`oscillator, the Board misapprehended or overlooked the intrinsic evidence that
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`demonstrates that “a supply voltage” can be associated with a component other
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`than the oscillator. Petitioner respectfully submits that this was legal error on part
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`of the Board because the Board’s analysis excludes the supply voltage of other
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`components (e.g., the microcontroller) from the scope of “a supply voltage”
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`limitation. Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We
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`normally do not interpret claim terms in a way that excludes embodiments
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`disclosed in the specification.”); Canon, Inc. v. Intellectual Ventures II LLC,
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`IPR2014-00631, Paper No. 50 at 12-13 (Aug. 19, 2015) (not limiting scope of
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`“selecting” to selecting by a “user” when specification suggested that the selection
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`could also be performed by the “image capture device”).
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`2. The Board’s Construction Is Not Supported by Other Claims
`The claim language of other claims of the ’183 patent counsel against the
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`Board’s interpretation of “supply voltage.” For instance, claim 54 and 55 recite
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`that the “supply voltage is a battery supply voltage” and “the supply voltage is a
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`voltage regulator supply voltage,” respectively. These claims indicate that if the
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`patentee wanted to be more specific regarding the scope of “supply voltage” in
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`claim 37, it would have done so like it did in claims 54 and 55. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the usage of a term in one
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`claim can often illuminate the meaning of the same term in other claims.”) Given
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`Case No. IPR2016-00908
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`the patentee did not limit the “supply voltage” in claim 37 in any fashion, it was
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`error for the Board to limit this voltage to a supply voltage of the oscillator.
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`3. The Board Should Give “Supply Voltage” Its Plain and
`Ordinary Meaning
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`In contrast to the Board’s limiting construction, the plain and ordinary
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`meaning of the claimed “a supply voltage,” as applied by Petitioner in the Petition
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`(Paper 2 at 11-15 (no construction offered), 18-19 (Ground 1, claim element
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`37(c)), is consistent with and supported by evidence of record, namely the ’183
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`patent (Ex. 1001) and the prosecution history (Ex. 1004). Consequently, Petitioner
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`respectfully requests that the Board reconsider its construction and interpret the
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`term consistent with the ’183 patent specification and the term’s plain and ordinary
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`meaning, which can include “a supply voltage” of components other than the
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`oscillator.
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`B.
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`The Board Erred in Denying Institution of Claims 37-39 Based on
`Its Construction
`As discussed above in Section III.A, the claimed “a supply voltage” in claim
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`37 should not be limited to just the supply voltage of the oscillator and instead, can
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`be the supply voltage of other components (e.g., microcontroller). Therefore, as
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`demonstrated in the Petition, under the correct interpretation of “supply voltage,”
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`Ingraham I in combination with Caldwell discloses “an oscillator voltage [that] is
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`greater than a supply voltage.” (Paper 2 at 18-19; Ex. 1002 at ¶ 50.) For instance,
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`Case No. IPR2016-00908
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`the Petition explained that Ingraham I, via the incorporated teachings of Ingraham
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`II, discloses that an oscillator voltage (115V) is greater than a supply voltage (15V)
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`of the microcomputer 80 in the combined Ingraham I-Caldwell system. (Pet. at
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`19; Ex. 1002 at ¶¶ 50-51.) Because the Board overlooked and misapprehended this
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`evidence of record based solely on its construction of “a supply voltage,” (Decision
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`at 15-16), Petitioner respectfully requests reconsideration of the Board’s decision
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`not to institute review of claims 37-39.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests that the Board reconsider its
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`decision not to review claims 37-39 and instead institute inter partes review of
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`claims 37-39 of the ’183 patent.
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`Dated: November 2, 2016
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`Respectfully submitted,
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`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
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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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`Request for Rehearing Under 37 C.F.R. § 42.71(d)(1) by electronic means on the
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`date below at the following address of record:
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`Respectfully submitted,
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` /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`Counsel for Petitioner
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`Jay Kesan (jay@keyiplaw.com)
`Teresa M. Summer (teresa@keyiplaw.com)
`DiMuro Ginsberg PC-DGKeyIP Group,
`1101 King Street, Ste. 610
`Alexandria, VA 22314
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`Dated: November 2, 2016
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