`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS COMPANY, LTD.
`Petitioner
`v.
`UUSI, LLC d/b/a NARTRON
`Patent Owner
`____________________
`Case IPR2016-00908
`Patent No. 5,796,183
`____________________
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`

`

`Case IPR2016-00908
`Patent No. 5,796,183
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioner
`
`Samsung Electronics Co., Ltd. (“Samsung”) cross-appeals to the United States Court
`
`of Appeals for the Federal Circuit from the Final Written Decision entered on
`
`September 17, 2020 (Paper 50) (the “Final Written Decision”) by the United States
`
`Patent and Trademark Office, Patent Trial and Appeal Board (the “Board”), and
`
`from all underlying orders, decisions, rulings, and opinions. A copy of the Final
`
`Written Decision is attached.
`
`This notice of cross-appeal is timely because it is being filed within 14 days
`
`of Patent Owner UUSI, LLC d/b/a Nartron’s December 17, 2021 Amended Notice
`
`of Appeal (Paper 55). See 37 C.F.R. § 90.3(a)(1); Fed. R. App. P. 4(a)(3).1
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Samsung indicates that the
`
`issues on cross-appeal include, but are not limited to, the Board’s ruling that
`
`Samsung did not prove by a preponderance of the evidence that claims 37-39 of U.S.
`
`Patent No. 5,796,183 are unpatentable over the prior art, and any findings or
`
`determinations supporting or related to that ruling including, without limitation, the
`
`Board’s construction of the claim term “a supply voltage.”
`
`
`1 Samsung previously filed this notice of cross-appeal on October 28, 2020. See
`Paper 52. UUSI, however, filed an amended notice of cross-appeal (Paper 55) after
`the Director denied its request for rehearing (Paper 54). Samsung therefore refiles
`its notice of cross-appeal out of an abundance of caution. A copy of the denial of
`request for rehearing is attached.
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`1
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`

`Case IPR2016-00908
`Patent No. 5,796,183
`
`Simultaneous with this submission, a copy of this Notice of Cross-Appeal is
`
`being filed with the Board. In addition, the Notice of Cross-Appeal and the required
`
`fee are being filed electronically with the Clerk of Court for the United States Court
`
`of Appeals for the Federal Circuit.
`
`Respectfully submitted,
`
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP
`
`Counsel for Samsung Electronics Co., Ltd
`
`
`
`Dated: January 3, 2022
`
`
`
`2
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`

`Trials@uspto.gov
`571-272-7822
`
`Paper 50
`Date: September 17, 2020
`
`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.
`
`IPR2016-00908
`Patent 5,796,183
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`JIVANI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 314, 318
`
`I.
`INTRODUCTION
`A. Background and Summary
`Samsung Electronics Co., Ltd., (“Petitioner”) sought inter partes
`review of claims 37–41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96,
`97, 99, 101, and 102 of U.S. Patent No. 5,796,183 (Ex. 1001, “the ’183
`
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`

`

`IPR2016-00908
`Patent 5,796,183
`patent”), owned by UUSI, LLC d/b/a Nartron (“Patent Owner”). Paper 2
`(“Petition” or “Pet.”). Patent Owner filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted an inter partes review of claims 40, 41, 43, 45, 47,
`48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the “Earlier
`Instituted Claims”) pursuant to 35 U.S.C. § 314. Paper 12 (“Decision on
`Institution” or “Dec. on Inst.”). We did not institute, however, an inter
`partes review of claims 37–39 at that time because we determined Petitioner
`had not established a reasonable likelihood that it would prevail with respect
`to those claims. Id.
`Petitioner sought rehearing of our decision denying review of claims
`37–39 because, according to Petitioner, we erred in our construction of the
`term “supply voltage,” as recited in independent claim 37. Paper 14, 1.
`Having considered Petitioner’s arguments for rehearing, we denied its
`request and maintained our preliminary construction of the term “supply
`voltage,” as recited in claim 37. Paper 17, 5–7.
`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 21, “PO Resp.”), and Petitioner filed a Reply thereto (Paper 24,
`“Reply”). An oral hearing was conducted on June 22, 2017. The record
`contains a transcript of the hearing (Paper 34). On December 13, 2017, we
`entered a Final Written Decision concluding that Petitioner had not shown
`by a preponderance of the evidence that the instituted claims were
`unpatentable. Paper 35, 24.
`Petitioner appealed our Decision to the United States Court of
`Appeals for the Federal Circuit, which vacated our Decision and remanded
`the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed.
`Cir. 2019). As to the earlier instituted claims, the Court instructed that we
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`IPR2016-00908
`Patent 5,796,183
`should consider “whether Samsung has shown that there would have been a
`reasonable expectation of success in combining the teaching of Gerpheide
`with the teachings of Ingraham [I]/Caldwell to arrive at the claimed
`invention.” Id. at 697. The Court further instructed us to “consider the
`patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the
`Supreme Court of the United States held that a decision to institute under 35
`U.S.C. § 314 may not institute on fewer than all claims challenged in the
`petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`Pursuant to the Federal Circuit’s instruction in this case and in light of
`SAS Inst., Inc., we modified our Decision on Institution to institute review of
`claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and
`Gerpheide. Paper 40. We further held a teleconference on August 15, 2019,
`with respective counsel for the parties, to hear their proposals on how to
`proceed with this trial. Paper 41, 2. Having considered the parties’
`proposals, we authorized the parties to submit concurrent briefs and
`subsequent responses addressing the following issues (id. at 6):
`(1) the Federal Circuit’s determination in the context of the Earlier
`Instituted Claims that “the claims are not limited to situations in which
`different frequencies are provided to different rows” and that “[a] reasonable
`expectation of success thus only requires that different frequencies be
`provided to the entire pad;”
`(2) whether Petitioner has shown that there would have been a
`reasonable expectation of success in combining the teaching of Gerpheide
`with the teachings of Ingraham I, Caldwell, and Wheeler (in certain
`instances) to arrive at the inventions of the Earlier Instituted Claims;
`(3) our construction in our Decision on Institution of the term “supply
`voltage,” as recited in independent claim 37; and
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`IPR2016-00908
`Patent 5,796,183
`(4) whether Petitioner has shown by a preponderance of the evidence
`that claims 37–39 are rendered obvious over the asserted combination of
`Ingraham I, Caldwell, and Gerpheide.
`On October 3, 2019, Petitioner submitted its Opening Brief on
`Remand (Paper 43, “Pet. Br.”) and Patent Owner submitted its Opening
`Brief on Remand (Paper 44, “PO Br.”). The parties filed cross responses on
`October 17, 2019. Paper 45 (“PO Remand Resp.”); Paper 46 (“Pet. Remand
`Resp.”).
`On December 11, 2019, with our prior authorization, Petitioner filed a
`brief addressing Patent Owner’s statements in co-pending proceeding
`IPR2019-00358, which reviews certain claims of the ’183 patent. Paper 47.
`Patent Owner filed an opposition thereto on December 13, 2019. Paper 49.
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) as to the patentability of
`the challenged claims before us on remand. Based on the complete trial
`record, Petitioner has shown by a preponderance of the evidence that claims
`40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and
`102 are unpatentable. Petitioner has failed to show by a preponderance of
`the evidence that claims 37–39 are unpatentable.
`B. Real Parties in Interest
`Petitioner identifies Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc., as real parties in interest. Pet. 1. Patent Owner
`identifies only itself, namely UUSI, LLC d/b/a/ Nartron, as a real party
`interest. Paper 7, 1. Neither party contests these identifications.
`C. Related Matters
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
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`IPR2016-00908
`Patent 5,796,183
`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014
`(“Reexam 2”). Claims 37–39 were added during Reexam 1, where the
`Earlier Instituted Claims were added during Reexam 2. Ex. 1006, 2–3;
`Ex. 1007, 27–28.
`Claims 37–39, 94, 96–99, 101–109, and 115–117 of the ’183 patent
`are the subject of an inter partes review pending before this Board on
`grounds applying art not at issue in this proceeding. Apple, Inc. v. UUSI,
`LLC d/b/a Nartron, IPR2019-00358, Paper 12 at 11–12 (PTAB Aug. 5,
`2019) (Decision on Institution). Further, claims 27, 28, 32, 36, 83–88, and
`90–93 of the ’183 patent are the subject of an inter partes review pending
`before this Board on grounds applying art not at issue in this proceeding.
`Apple, Inc. v. UUSI, LLC d/b/a Nartron, IPR2019-00359, Paper 12 at 12
`(PTAB Aug. 5, 2019) (Decision on Institution).
`The ’183 patent is the subject of ongoing litigation between the parties
`in the Western District of Michigan: UUSI, LLC d/b/a Nartron v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No.
`1:15-cv-00146-JTN, originally filed on February 13, 2015 (W.D. Mich.)
`(the “District Court litigation”). Pet. 1. The District Court litigation is
`stayed and administratively closed until resolution of this inter partes
`review. Order, Case No. 1:15-cv-00146-JTN, Dkt. No. 137 (filed
`Jan. 13, 2017).
`D. The ’183 Patent
`The ’183 patent, titled “CAPACITIVE RESPONSIVE
`ELECTRONIC SWITCHING CIRCUIT,” was filed January 31, 1996, and
`issued August 18, 1998. Ex. 1001, codes [22], [45], [54]. The ’183 patent
`has expired. Pet. 11; Prelim. Resp. 7.
`
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`IPR2016-00908
`Patent 5,796,183
`The ’183 patent relates to a “capacitive responsive electronic
`switching circuit used to make possible a ‘zero force’ manual electronic
`switch.” Ex. 1001, 1:6–9. According to the ’183 patent, zero force touch
`switches have no moving parts and no contact surfaces that directly switch
`loads. Id. at 2:40–41. Instead, such switches detect an operator’s touch and
`use solid state electronics to switch loads or activate mechanical relays. Id.
`at 2:42–44. “A common solution used to achieve a zero force touch switch
`has been to make use of the capacitance of the human operator.” Id. at 3:12–
`14. As background, the ’183 patent describes three methods used by
`capacitive touch switches to detect an operator’s touch, one of which relies
`on the change in capacitive coupling between a touch terminal and ground.
`Id. at 3:13–15, 3:44–46. In this method, “[t]he touch of an operator then
`provides a capacitive short to ground via the operator’s own body
`capacitance.” Id. at 3:52–55. Figure 8, reproduced below, is an example
`that makes use of this method.
`
`
`Figure 8 depicts a “touch circuit” in which, when a pad (not shown) is
`touched to create a short to ground via terminal 451, transistor 410 turns on
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`IPR2016-00908
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`and connects high frequency input at 201 to resistor/capacitor circuit
`416/418, thus triggering Schmitt Trigger 420 to provide control output 401.
`Id. at 14:47–52, 15:17–47. Significantly, the operator of a capacitive touch
`switch using this method need not come in conductive contact with the touch
`terminal. Id. at 3:57–59. Rather, the operator needs only to come into close
`proximity of the switch. Id.
`Figure 4 of the ’183 patent is reproduced below.
`
`
`Figure 4 is a block diagram of a capacitive responsive electronic switching
`circuit according to a first embodiment of the ’183 patent. Id. at 7:23–25.
`As depicted in Figure 4, the electronic switching circuit of the first
`embodiment comprises voltage regulator 100, oscillator 200, floating ground
`generator 300, touch circuit 400, touch pad 450, and microcontroller 500.
`Id. at 11:64–12:33.
`Voltage regulator 100 converts a received AC voltage to a DC voltage
`and supplies a regulated 5 volts (V) DC power to oscillator 200 via lines 104
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`IPR2016-00908
`Patent 5,796,183
`and 105. Id. at 11:67–12:2. Voltage regulator 100 also supplies oscillator
`200 with 26 V DC power via line 106. Id. at 12:2–3.
`Upon being powered by voltage regulator 100, oscillator 200
`generates a square wave with a frequency of 50 kHz, or preferably greater
`than 800 kHz, and having an amplitude of 26 V peak. Id. at 12:6–9.
`Floating common generator 300 receives the 26 V peak square wave from
`oscillator 200, and outputs a regulated floating common that is 5 volts below
`the square wave output from oscillator 200 and has the same phase and
`frequency as the received square wave. Id. at 12:14–18. This floating
`common output is supplied to touch circuit 400 and microcontroller 500 via
`line 301 such that the output square wave from oscillator 200 and floating
`common output from floating common generator 300 provide power to
`touch circuit 400 and microcontroller 500. Id. at 12:18–23.
`Touch circuit 400 senses capacitance from touch pad 450 via line 451
`and outputs a signal to microcontroller 500 via line 401 upon detecting a
`capacitance to ground at touch pad 450 that exceeds a threshold value. Id. at
`12:24–27. Figure 8 reproduced above describes touch circuit 400 in detail.
`Id. at 12:27–28.
`Upon receiving an indication from touch circuit 400 that a sufficient
`capacitance to ground is present at touch pad 450, microcontroller 500
`outputs a signal to load-controlling microcontroller 600 via line 501, which
`is preferably a two way optical coupling bus. Id. at 12:29–34.
`Microcontroller 600 then responds in a predetermined manner to control
`load 700. Id. at 12:33–35.
`
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`IPR2016-00908
`Patent 5,796,183
`Figure 11 of the ’183 patent is reproduced below.
`
`
`Figure 11 is a block diagram of a capacitive responsive electronic switching
`circuit according to a second embodiment of the ’183 patent. Id. at 7:43–45.
`As depicted in Figure 11, the second embodiment discloses a “multiple
`touch pad circuit,” which is a variation of the electronic switching circuit of
`the first embodiment discussed above in that the multiple touch pad circuit
`includes “an array of touch circuits” 9001 through 900nm, where each
`element of the array includes touch circuit 400 described in Figures 4 and 8
`above, as well as touch pad 450 depicted in Figure 4. Id. at 18:34–43.
`In this “multiple touch pad circuit” embodiment, microcontroller 500
`selects each row of touch circuits 9001 to 900nm by providing the signal from
`oscillator 200 to selected rows of touch circuits. Id. at 18:43–46. The ’183
`patent describes that “[i]n this manner, microcontroller 500 can sequentially
`activate the touch circuit rows and associate the received inputs from the
`columns of the array with the activated touch circuit(s).” Id. at 18:46–49. In
`
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`IPR2016-00908
`Patent 5,796,183
`other words, the microcontroller selects successive rows of the touch circuit
`array by providing the signal from oscillator 200 sequentially to each row,
`such that a particular activated touch circuit is detected by the
`microcontroller via association of an activated row with received input from
`a column line of the array. Id. at 18:43–49.
`The ’183 patent recognizes that placing capacitive touch switches in
`dense arrays, as in Figure 11, can result in unintended actuations. Id. at
`3:65–4:3. One method of addressing this problem known in the art involves
`placing guard rings around each touch pad. Id. at 4:4–7. Another known
`method of addressing this problem is to adjust the sensitivity of the touch
`pad such that the operator’s finger must entirely overlap a touch terminal.
`Id. at 4:8–14. “Although these methods (guard rings and sensitivity
`adjustment) have gone a considerable way in allowing touch switches to be
`spaced in comparatively close proximity, a susceptibility to surface
`contamination remains as a problem.” Id. at 4:14–18.
`The ’183 patent uses the technique of Figure 11 to overcome the
`problem of unintended actuation of small capacitive touch switches “by
`using the method of sensing body capacitance to ground in conjunction with
`redundant detection circuits.” Id. at 5:33–35. Specifically, the ’183 patent’s
`touch detection circuit operates at frequencies at or above 50 kHz, and
`preferably at or above 800 kHz, in order to minimize the effects of surface
`contamination on the touch pads. Id. at 11:19–29. Operating at these
`frequencies also improves sensitivity, allowing close control of the
`proximity required for actuation of small-sized touch terminals in a close
`array, such as a keyboard. Id. at 5:48–57.
`
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`IPR2016-00908
`Patent 5,796,183
`E. Illustrative Claims
`Claims 37 and 40 illustrate the claimed subject matter and are
`reproduced below with bracketed material 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;
`[37c] the first and second touch terminals defining areas
`for an operator to provide an input by proximity and touch; and
`[37d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said first and second touch terminals, said detector
`circuit being responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said first and second touch
`terminals when proximal or touched by the operator to provide
`a control output signal for actuation of the controlled device,
`said detector circuit being configured to generate said control
`output signal when the operator is proximal or touches said
`second touch terminal after the operator is proximal or touches
`said first touch terminal.
`
`40. A capacitive responsive electronic switching circuit
`comprising:
`[40a] an oscillator providing a periodic output signal
`having a predefined frequency;
`[40b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a plurality of small sized input
`touch terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
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`IPR2016-00908
`Patent 5,796,183
`output frequency to each row of the plurality of small sized
`input touch terminals of the keypad;
`[40c] the plurality of small sized input touch terminals
`defining adjacent areas on a dielectric substrate for an operator
`to provide inputs by proximity and touch; and
`[40d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said input touch terminals, said detector circuit being
`responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said touch terminals when
`proximal or touched by the operator to provide a control output
`signal,
`[40e] wherein said predefined frequency of said oscillator
`and said signal output frequencies are selected to decrease a
`first impedance of said dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`
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`103(a)
`
`IPR2016-00908
`Patent 5,796,183
`F. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §1
`Reference(s)/Basis
`37–41, 43, 45, 61,
`64–67, 69, 83, 85, 86,
`88, 90, 91, 94, 96, 97,
`99, 101, and 102
`47, 48, 62, 63, and 84 103(a)
`
`G. Testimony
`Petitioner supports its challenges with a declaration of Dr. Vivek
`Subramanian (Ex. 1002), filed contemporaneously with the Petition, and a
`rebuttal declaration of Dr. Subramanian (Ex. 1017), filed contemporaneously
`with the Reply. Dr. Subramanian testified further by deposition on
`February 3, 2017, and a transcript of his testimony has been entered into
`evidence. Ex. 2009.
`
`Ingraham I2, Caldwell3,
`Gerpheide4
`
`Ingraham I, Caldwell,
`Gerpheide, Wheeler5
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 103 that became effective on March 16, 2013. Because the ’183
`patent issued from an application with an effective filing date earlier than
`March 16, 2013, we apply the pre-AIA version of the statutory basis for
`unpatentability.
`
` 2
`
` U.S. Patent No. 5,087,825, issued Feb. 11, 1992, (Ex. 1007, “Ingraham I”)
`along with portions of U.S. Patent No. 4,731,548, issued Mar. 15, 1988
`(Ex. 1008, “Ingraham II”) incorporated by reference.
`
` 3
`
` 4
`
` 5
`
` U.S. Patent No. 5,594,222, issued Jan. 14, 1997 (Ex. 1009).
`
` U.S. Patent No. 5,565,658, issued Oct. 15, 1996 (Ex. 1012).
`
` U.S. Patent No. 5,341,036, issued Aug. 23, 1994 (Ex. 1015).
`
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`IPR2016-00908
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`Patent Owner rebuts Petitioner’s challenges with a declaration of
`Dr. Darran Cairns (Ex. 2002), filed contemporaneously with the Preliminary
`Response, and an additional declaration of Dr. Cairns (Ex. 2010), filed
`contemporaneously with the Patent Owner Response. Dr. Cairns testified
`further by deposition on April 21, 2017, and a transcript of his testimony has
`been entered into evidence. Ex. 1018.
`Neither party seeks to introduce additional testimony after the Federal
`Circuit’s decision remanding the case to us. Paper 41, 3–5.
`H. Level of Ordinary Skill in the Art
`Citing testimony of its declarant, Dr. Subramanian, Petitioner
`contends that a person having ordinary skill in the art at the time of the
`invention would have had a minimum of: (1) a bachelor’s degree in
`electrical engineering, or equivalent thereof; and (2) “two to three years of
`experience in the relevant field, which includes touch systems technology.”
`Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines
`that a person of ordinary skill “in the art of capacitive touch sensors would
`have had at least a bachelor’s degree in physics or electrical engineering or
`equivalent industry experience in the field.” Ex. 2002 ¶ 14.
`In our Final Written Decision, we noted that the levels of ordinary
`skill proposed by the parties do not differ significantly, but adopted
`Petitioner’s proposed definition as more representative, indicating that our
`analysis would be the same under either definition. Paper 35, 9–10. On
`remand, neither party disputes the definition adopted in the Final Written
`Decision. Furthermore, no argument presented by the parties on remand
`would be affected by adopting one of the proposed definitions over the
`other. We maintain here the definition adopted in the Final Written
`Decision.
`
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`IPR2016-00908
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`
`II. CLAIM CONSTRUCTION
`A. Principles of Law
`The ’183 patent expired on January 31, 2016. Pet. 11; Prelim. Resp.
`7. Our review of the claims of an expired patent is “similar to that of a
`district court’s review,” as set forth by the Court in Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b)6; see also
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–45 (2016). Under
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have to a person of
`ordinary skill in the art at the time of the invention, in light of the
`Specification and prosecution history. See Phillips, 415 F.3d at 1312–14.
`“Importantly, the person of ordinary skill in the art is deemed to read the
`claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Id. at 1313. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Any special definition for a claim term must be set
`
`
`6 The recent changes to this rule are inapplicable here because the Petition
`was filed before November 13, 2018, but if they were applicable here, they
`would also require that we construe the challenged claims by applying “the
`standard used in federal courts, in other words, the claim construction
`standard that would be used to construe the claim in a civil action under 35
`U.S.C. [§] 282(b), which is articulated in Phillips.” See Changes to the
`Claim Construction Standard for Interpreting Claims in Trial Proceedings
`Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,343–44
`(Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)).
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`forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`B. The supply voltage limitations
`In our Decision on Institution, we addressed the scope of the
`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”). Dec. on Inst. 8.
`We observed, “[i]ndependent claim 37 recites, in relevant part, ‘an oscillator
`providing a periodic output signal having a predefined frequency, wherein
`an oscillator voltage is greater than a supply voltage.’” Id. at 9 (emphasis
`added). Based on the context of the supply voltage limitation in this claim,
`we determined that one of ordinary skill in the art would understand the term
`“oscillator voltage” as referring to the “periodic output signal” and the term
`“supply voltage” as referring to a supply voltage of the oscillator. Id.
`We based our assessment of the scope of the supply voltage limitation
`recited in claim 37 on the Specification’s disclosure that voltage regulator
`100 provides supply voltages 104, 105, and 106 to oscillator 200. Id. (citing
`Ex 1001, 11:64–12:29, Figs. 4, 5). In so doing, we rejected Patent Owner’s
`contention that the claim language restricts the supply voltage to exclude an
`external commercial power supply. Id. We found, contrary to Patent
`Owner’s arguments, that the Specification discloses supply voltages of
`oscillator 200 including batteries and commercial power lines.
`In its Opening Brief on Remand, Petitioner asserts that the plain and
`ordinary meaning of “supply voltage” is not limited to a particular device,
`such as an oscillator, and further argues that we have improperly limited
`claim 37 to an exemplary embodiment while excluding from the scope of
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`claim 37 other embodiments of the ’183 patent. Pet. Br. 7–8. More
`specifically, Petitioner asserts that the presence of a “semicolon” after
`“supply voltage” and the use of the transition term “wherein” do not compel
`our construction. Id. at 9. Further, Petitioner asserts that because certain
`dependent claims include narrower recitations of “supply voltage,” if the
`applicant wanted to be more specific regarding the scope of “supply voltage”
`in claim 37 it would have been more specific. Id.
`Moreover, Petitioner asserts that because we looked to the
`Specification in our Decision on Institution to confirm our construction, we
`read in an added limitation limiting the claim to an exemplary embodiment.
`Id. at 10. Petitioner argues there is no clear indication, such as a definition,
`disavowal, or disclaimer, in the Specification or the prosecution history that
`would compel limiting “supply voltage” beyond its plain and ordinary
`meaning. Id. Petitioner goes on to describe embodiments allegedly
`supported by the Specification that it believes to be excluded by our
`construction of “supply voltage.” Id. at 11–13 (citing Oatey Co. v. IPS
`Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008)).
`In its Opening Brief on Remand, Patent Owner asserts that our
`construction as set forth in the Decision on Institution and further discussed
`in the Decision on the Request for Rehearing was properly supported by our
`discussion of the grammar of the claim, as well as the Specification. PO
`Br. 14–15.
`As an initial matter, Petitioner’s focus on allegedly undue limitation
`of the plain and ordinary meaning of “supply voltage” is misplaced. We do
`not, as Petitioner alleges, limit the plain and ordinary meaning of “supply
`voltage” to a particular device. Instead, the language of the claim itself
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`limits the claimed “supply voltage” to the supply voltage the claim identifies
`(i.e., that of the oscillator).
`In its discussion of plain and ordinary meaning, Petitioner asserts that
`the presence of “a” before “supply voltage” suggests that the claimed
`“supply voltage” is not referring to a particular component. Pet. Br. 8.
`Petitioner does not explain why this would be so. Id. at 9. Indeed, the
`article “a” merely indicates the first use of the term in the claim as a matter
`of antecedent basis. Its usage is inapposite to whether the term refers to a
`particular component.
`On the other hand, Petitioner acknowledges that “punctuation and
`transition term[s]” should be considered in determining the meaning of a
`claim term, but asserts without further support that the presence of a
`semicolon after “supply voltage” and the use of the transition term
`“wherein” do not compel the preliminary construction. Id. As we addressed
`in denying Petitioner’s Request for Rehearing, claim 37 employs the
`open-ended transition term “comprising” followed by a colon to indicate that
`a list elements follows, and employs semicolons to separate the elements of
`that list. Paper 17, 5. 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.” Id. Element 37a then ends with a
`semicolon and the claim proceeds to element 37b, which recites a
`microcontroller. Id. Petitioner thus nominally acknowledges consideration
`of punctuation, but advances a construction that asks us to disregard
`punctuation affirmatively recited in the claim. To do so would be
`“inconsistent with the punctuation [patentee] chose for this claim.” In re
`Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010).
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`Likewise, as to Petitioner’s assertion that we read an additional
`limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited
`to a particular exemplary embodiment, such a limitation results from the
`claim being drafted to cover o