Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 17
`
`Entered: December 13, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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 5,796,183
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`Paper 17
`
`Entered: December 13, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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 5,796,183
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`I.
`INTRODUCTION
`Petitioner Samsung Electronics Co., Ltd. requests rehearing (Paper 14,
`“Reh’g Req.”) of the Decision mailed October 19, 2016 (Paper 12,
`“Decision”) denying institution of inter partes review for claims 37–39 of
`U.S. Patent No. 5,796,183 (“the ’183 patent”) (Ex. 1001), but instituting
`review of claims 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97,
`99, 101, and 102 of the ’ 183 patent. In its request, Petitioner contends we
`erred in our construction of the term “supply voltage,” as recited in
`independent claim 37. Reh’g Req. 1.
`
`“The burden of showing a decision should be modified lies with the
`party challenging the decision[,]” who “must specifically identify all matters
`the party believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply.” 37 C.F.R. § 42.71(d).
`
`For the reasons discussed below, Petitioner’s Request for Rehearing is
`denied.
`
`
`
`II.
`BACKGROUND
`Petitioner challenged independent claims 37, 40, 61, 83, and 94
`together with numerous dependent claims of the ’183 Patent, which expired
`on January 31, 2016. Pet 11–12. In so doing, Petitioner urged that we need
`not construe the terms of the challenged claims. Pet 12. To the extent we
`chose to construe a particular term, Petitioner urged that we adopt the
`constructions it set forth in a related district court litigation. Id. Petitioner,
`
`2
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`IPR2016-00908
`Patent 5,796,183
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`however, did not seek construction of the term “supply voltage” in that
`litigation. See Pet. 12–15.
`Patent Owner sought construction of the following limitations:
`“oscillator voltage is greater than a supply voltage,” as recited in
`independent claim 37 and “peak voltage of the signal output frequencies is
`greater than a supply voltage” as recited in each of independent claims 61,
`83, and 94 (collectively, the “supply voltage limitations”).1 Prelim. Resp.
`14–17.
`Independent claims 37 and 83 are reproduced in relevant part below
`with bracketed material and emphasis added.
`37. A capacitive responsive electronic switching circuit for a
`controlled device comprising:
`[37a] an oscillator providing a periodic output signal
`having a predefined frequency, wherein an oscillator voltage is
`greater than a supply voltage;
`[37b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a closely spaced array of input
`touch terminals of a keypad, the input touch terminals
`comprising first and second input touch terminals;
`. . . .
`83. A capacitive responsive electronic switching circuit for a
`controlled keypad device comprising:
`[83a] an oscillator providing a periodic output signal
`having a predefined frequency;
`[83b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a closely spaced array of input
`touch terminals of a keypad, the input touch terminals
`comprising first and second input touch terminals, wherein a
`
`
`1 Independent claim 40 does not recite a “supply voltage.”
`
`3
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`IPR2016-00908
`Patent 5,796,183
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`
`peak voltage of the signal output frequencies is greater than a
`supply voltage;
`. . . .
`In our Decision, we determined, based on the context of the supply
`voltage limitation in claim 37, that one of ordinary skill in the art would
`understand the term “supply voltage” in this claim as referring to a supply
`voltage of the oscillator. Decision 9. We further determined, based on the
`context of the supply voltage limitations in claims 61, 83, and 94, that one of
`ordinary skill in the art would understand the term “supply voltage” in these
`claims as referring to a supply voltage of the microcontroller. Id. at 10.
`
`
`III. ANALYSIS
`Petitioner contends that we erred in construing the term “supply
`voltage” in claim 37. Req. Reh’g 3. Specifically, Petitioner asserts that we
`“unreasonably narrowed the scope of ‘a supply voltage’ by reading a
`limitation from a disclosed embodiment into claim 37.” Id. at 4. According
`to Petitioner, “the Board overlooked the fact that both microcontroller 500
`and voltage regulator 100 also have a ‘supply voltage’ that is less than the
`oscillator output voltage.” Id. at 5. Petitioner contends our construction
`excluding the voltages provided to these other components “was legal error
`on part of the Board.” Id. at 7. Petitioner further argues our construction is
`inconsistent with claims 54 and 55 (which are not challenged in the Petition
`and do not depend from any of the challenged claims) and invites us to
`accord the supply voltage limitation in claim 37 its “plain and ordinary
`meaning” encompassing “components other than the oscillator.” Id. at 7–8.
`We are not persuaded by Petitioner’s arguments that anything was
`overlooked or misapprehended. As an initial matter, we observe that
`
`4
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`IPR2016-00908
`Patent 5,796,183
`
`Petitioner chose not to provide an interpretation for the supply voltage
`limitation of claim 37 (or any other claim limitation) in the Petition, and
`therefore cannot identify where in the Petition this matter was addressed.
`We could not have misapprehended or overlooked something not adequately
`explained in the Petition. A request for rehearing is not an opportunity to
`supplement the Petition. Regardless, we are not persuaded that our Decision
`was incorrect.
`Our construction of the supply voltage limitation in claim 37 is
`grounded in the plain language of the claim. The basic grammar of claim 37
`indicates the supply voltage limitation refers to the claimed oscillator.
`Claim 37 employs the open-ended transition term “comprising” followed by
`a colon to indicate that a list elements follows. Subsequently, claim 37
`employs semicolons to separate the elements of that list. The first element
`of the list, element 37a, describes an oscillator and includes the supply
`voltage limitation preceded by a comma and the transition term “wherein.”
`Element 37a then ends with a semicolon and the claim proceeds to element
`37b, which recites a microcontroller. The punctuation and transition term
`indicate that the supply voltage limitation refers to the oscillator of element
`37a and not the other components recited in separate elements, such as the
`microcontroller of element 37b. Petitioner’s argument fails to address the
`grammar of claim 37, and is “is inconsistent with the punctuation [patentee]
`chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010).
`In light of the plain language of claim 37, we are not persuaded by
`Petitioner’s argument that the Specification describes additional supply
`voltages meeting the claim limitation. Req, Reh’g 5–7. For example,
`Petitioner directs our attention to the 21V on line 301 in Figures 4 and 11
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`IPR2016-00908
`Patent 5,796,183
`
`and asserts that this voltage meets the claimed “supply voltage” because it is
`supplied to microcontroller 500. Req, Reh’g 6. Element 37a recites “an
`oscillator.” The portion of the Specification describing the claimed
`oscillator does not support Petitioner’s argument. More particularly, the
`Specification describes that voltage regulator 100 “supplies a regulated 5 V
`DC power to an oscillator 200 via lines 104 and 105. Voltage regulator also
`supplies oscillator 200 with 26 V DC power via line 106.” Ex 1001, 11:67–
`12:3 (emphasis added); see also Decision 9. Conversely, the Specification
`describes the voltage on line 301 as a “floating common output” derived
`from “the output square wave 20 from oscillator 200.” Ex 1001, 12:17–22
`(emphasis added). Thus, the Specification describes the voltage cited by
`Petitioner as an output of the oscillator, while describing lines 104, 105, and
`106 as supply voltages to the oscillator.
`Finally, contrary to Petitioner’s assertions (Req. Reh’g 7–8), our
`construction of the supply voltage limitation in claim 37 is consistent with
`the remaining claims of the ’183 patent. For instance, independent claims
`61, 83, and 94 recite supply voltage limitations that we construed as
`referring to a supply voltage of the microcontroller, not to the oscillator.
`Decision 10. We note Petitioner does not challenge our construction of the
`supply voltage limitations in claims 61, 83, and 94. The fact that other
`claims including claims 61, 83, and 94 specifically refer to a different supply
`voltage does not overcome the fact that the “supply voltage” in claim 37
`refers to the supply voltage of the oscillator as that claim is written.
`We are not persuaded, therefore, that we overlooked or misunderstood
`any argument made in the Petition or record evidence regarding the scope of
`the supply voltage limitation recited in independent claim 37. As discussed
`
`6
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`IPR2016-00908
`Patent 5,796,183
`
`in our Decision, Petitioner failed to identify in the applied art a supply
`voltage of an oscillator. Decision 15–16. Thus, we find no error in our
`Decision denying Petitioner’s request to institute review of claims 37–39.
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314 (a), Petitioner’s Request
`for Rehearing is denied.
`
`
`
`7
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`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`FOR PETITIONER:
`Naveen Modi
`Joseph Palys
`Chetan Bansal
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`
`PATENT OWNER:
`Jay P. Kesan
`Teresa M. Summers
`DIMURO GINSBERG PC
`jay@keyiplaw.com
`teresa@keyiplaw.com
`
`
`8
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