`Filed: December 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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`____________________
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`Case IPR2016-00908
`Patent No. 5,796,183
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`____________________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S
`PAPER NO. 47 REGARDING PATENT OWNER’S
`STATEMENTS IN IPR2019-00358
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`1759810
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`Case IPR2016-00908
`Patent No. 5,796,183
`The issue on remand is not whether a POSITA would have expected success
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`in generically “modifying the Ingraham I-Caldwell combination” to “provide
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`multiple frequencies to a touch pad.” Paper 47 at 1. It is whether a POSITA would
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`have expected success in making the specific Caldwell-Ingraham I-Gerpheide
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`combination asserted by Samsung. See Samsung Elecs. Co. v. UUSI, LLC, 775 F.
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`App'x 692, 697 (Fed. Cir. 2019); see also Paper 2 at 28 (asserting that a POSITA
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`“would have been motivated to incorporate interference negating functionality
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`similar to that described by Gerpheide in the . . . Ingraham I-Caldwell system”)
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`(emphasis added). Neither Gerpheide, Ingraham I nor Caldwell is at issue in
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`IPR2019-00358. Rather, in that IPR, Apple is asserting entirely different references,
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`including “Chiu” and “Schwarzbach.” Ex. 1019 at 1-3. Since Ingraham I, Caldwell
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`and Gerpheide are not at issue in IPR2019-00358, Nartron could not possibly have
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`“admitted,” in that IPR, that a POSITA would have had a reasonable expectation of
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`success in combining those references. Nartron simply made no such admission.
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`To the contrary, Nartron’s statements in IPR2019-00358 relate solely to the
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`adequacy of the written description of the ‘183 patent. Ex. 1019 at 19-28. Those
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`statements have no bearing on whether, without the benefit of the ‘183 patent’s
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`disclosure, a POSITA would have had a reasonable expectation of success in
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`combining Caldwell, Ingraham I and Gerpheide, to arrive at the claimed invention.
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`Thus, Nartron’s statements in IPR2019-00358 are irrelevant to this remand.
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`1759810
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`1
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`Dated: December 17, 2019
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`Case IPR2016-00908
`Patent No. 5,796,183
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`Respectfully submitted,
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`By:
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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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`1759810
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`2
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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 the foregoing PATENT OWNER’S
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`RESPONSE TO PETITIONER’S PAPER NO. 47 REGARDING PATENT
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`OWNER’S STATEMENTS IN IPR2019-00358 was served by email on the
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`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: December 17, 2019
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`Respectfully submitted,
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`By: /s/ Stephen Underwood
`Stephen Underwood
`Reg. No. 77,977
`Counsel for Patent Owner
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`1759810
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`3
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