Paper No. 16
`Filed: November 4, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE, INC.
`Petitioner
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`
`____________________
`
`
`Case IPR2019-00359
`Patent No. 5,796,183
`
`____________________
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`1739376
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 4
`
`A.
`
`B.
`
`The ’183 Patent ..................................................................................... 4
`
`The Cited References ............................................................................ 8
`
`1.
`
`2.
`
`3.
`
`Chiu ............................................................................................. 8
`
`Schwarzbach ............................................................................. 10
`
`Lawson ...................................................................................... 11
`
`4. Meadows ................................................................................... 12
`
`5.
`
`6.
`
`Ingraham ’548 ........................................................................... 12
`
`Tucker ....................................................................................... 13
`
`III. CLAIM CONSTRUCTION .......................................................................... 13
`
`A.
`
`B.
`
`Claim Construction Standard .............................................................. 13
`
`“Selectively Providing Signal Output Frequencies” ........................... 14
`
`1.
`
`2.
`
`The Federal Circuit Issued an Explicit Claim
`Construction, Which Is Binding on the Board .......................... 14
`
`Adopting the Federal Circuit’s Construction Would Not
`Cause the Claims to Lack Written Description Support ........... 19
`
`3.
`
`The Federal Circuit’s Construction Is Legally Correct ............ 28
`
`IV. LEGAL STANDARDS ................................................................................. 30
`
`V. ARGUMENT ................................................................................................. 31
`
`A.
`
`B.
`
`C.
`
`[All Grounds] – The Cited References Do Not Disclose
`“Selectively Providing Signal Output Frequencies” ........................... 31
`
`[All Grounds] – The Cited References Do Not Disclose
`“Providing a Periodic Output Signal Having a Predefined
`Frequency” .......................................................................................... 34
`
`[All Grounds] – The Cited Art Does Not Disclose “Selectively
`Providing Signal Output Frequencies to a Closely Spaced
`Array” .................................................................................................. 37
`
`D.
`
`[All Grounds] – Apple Has Not Shown a Motivation to
`
`1739376
`
`i
`
`

`

`
`Case IPR2019-00359
`Patent No. 5,796,183
`
`
`
`Combine Schwarzbach and Chiu, or a Reasonable Expectation
`of Success ............................................................................................ 39
`
`[Claims 83-88 and 90-93] – The Cited Art Does Not Disclose
`“Wherein a Peak Voltage of the Signal Output Frequencies is
`Greater than a Supply Voltage” .......................................................... 44
`
`[Claim 90] – The Cited Art Fails to Disclose, or Render
`Obvious, “Wherein the Supply Voltage is a Battery Supply
`Voltage” ............................................................................................... 47
`
`[Ground 1B] – Apple Has Not Proven Obviousness of Claims
`86-88 Over Chiu, Schwarzbach and Meadows ................................... 48
`
`[Ground 1C] – Apple Has Not Proven Obviousness of Claim 91
`Over Chiu, Schwarzbach and Ingraham ’548 ..................................... 54
`
`[Ground 1D] – Apple Has Not Proven Obviousness of Claims
`28 and 92 over Chiu, Schwarzbach and Tucker .................................. 54
`
`[Ground 1E] – Apple Has Not Proven Obviousness of Claims
`32, 36 and 93 Over Chiu, Schwarzbach and Lawson ......................... 57
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`VI. CONCLUSION .............................................................................................. 57
`
`
`
`
`
`
`1739376
`
`ii
`
`

`

`
`Case IPR2019-00359
`Patent No. 5,796,183
`
`
`
`
`
`EXHIBITS
`
`UUSI-2001
`
`Declaration of Lawrence M. Hadley in support of patent
`
`owner’s motion for pro hac vice admission
`
`
`
`UUSI-2002
`
`Declaration of Dr. Darran Cairns in support of patent owner
`
`preliminary response
`
`
`
`UUSI-2003
`
`Deposition of Phillip D. Wright, Ph.D.
`
`
`
`UUSI-2004
`
`Declaration of Dr. Darran Cairns in support of patent owner
`
`response
`
`
`
`
`
`
`iii
`
`1739376
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`I.
`
`INTRODUCTION
`
`The ’183 Patent provided an important improvement over the prior art: i.e.,
`
`the ability to bring capacitive touch terminals very close together, while rejecting
`
`contamination-induced crosstalk between adjacent terminals. This improvement
`
`supplied a key foundation for the modern proliferation of capacitive touchscreens in
`
`mobile phones, tablets, and other devices. The inventors of the ’183 Patent—Byron
`
`Hourmand, John Washeleski, and Stephen Cooper—conducted extensive empirical
`
`research to develop the theoretical and practical framework for rejection of
`
`contamination-induced crosstalk in closely-spaced capacitive touch terminals. See
`
`Ex. 1001 at 8:9-11:60. The inventors incorporated that research into a novel, highly
`
`effective, capacitive-responsive electronic switching circuit. Without the inventors’
`
`contributions, the modern “boom” in high-density capacitive touchscreens would
`
`not have been possible.
`
`In response to Apple’s Petition, the Board instituted review, because it found
`
`a “reasonable likelihood” that Apple would prevail in showing obviousness of “at
`
`least one” of, but not all of, challenged claims 27, 28, 32, 36, 83–88, and 90–93 of
`
`Nartron’s U.S. Patent No. 5,796,183 (“the ’183 Patent”). See Paper 12 at 1.
`
`As the Board explained in its Institution Decision, the Board found no
`
`reasonable likelihood that Apple would prevail in showing obviousness of claims
`
`86-88 over Chiu, Schwarzbach and Meadows. Id. at 50-58. The Board’s findings on
`
`1739376
`
`1
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`these claims were correct, for at least the reasons stated in the Institution Decision.
`
`Thus, the Board’s Final Written Decision should confirm that Apple failed to prove
`
`obviousness of these claims by a preponderance of the evidence.
`
`In contrast, the Board found a reasonable likelihood that Apple would prevail
`
`in showing obviousness of:
`
`• Claim 27 over Chiu (Paper 12 at 50);
`
`• Claims 83-85 and 90 over Chiu and Schwarzbach (id.);
`
`• Claim 91 over Chiu, Schwarzbach and Ingraham ’548 (id. at 59);
`
`• Claims 28 and 92 over Chiu, Schwarzbach and Tucker (id. at 61);
`
`• Claims 32 and 36 over Chiu and Lawson (id. at 63); and
`
`• Claim 93 over Chiu, Schwarzbach and Lawson (id.).
`
`As to these claims, the Board’s findings depended on its construction of
`
`“selectively providing signal output frequencies,” to “not require the microcontroller
`
`to select signal output frequencies from multiple available frequencies.” Paper 12 at
`
`31 (emphasis in original).
`
`The Board’s construction directly conflicts with the Federal Circuit’s recent
`
`construction of the same term in Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x
`
`692 (Fed. Cir. 2019). In its published opinion, the Federal Circuit construed
`
`“selectively providing signal output frequencies” to mean “‘provid[ing]’ a
`
`frequency, selected from multiple possible frequencies, to the entire touch pad.” Id.
`
`1739376
`
`2
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`at 697 (emphasis added). Although issued in a different case, the Federal Circuit’s
`
`construction of “selectively providing signal output frequencies” is now binding on
`
`the Board. See, e.g., Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2014
`
`WL 1645838, at *3 (N.D. Ill. Apr. 24, 2014).
`
`Applying the Federal Circuit’s binding construction, Apple must show that
`
`the cited combinations of references disclose “providing a frequency, selected from
`
`multiple possible frequencies, to the entire touch pad.” Samsung, 775 F. App’x at
`
`697. Apple cannot do so with its cited combinations of references.
`
`Chiu, Apple’s primary reference, does not disclose selecting a frequency from
`
`multiple possible frequencies. Nor does Schwarzbach, Ingraham, Tucker, or
`
`Lawson. While Meadows discloses random scan frequencies, it does not disclose
`
`“selectively providing” a frequency from multiple frequencies. Further, the Board
`
`correctly found that Apple “has not explained adequately how a skilled artisan would
`
`have made the proposed combination of Chiu and Meadows.” Paper 12 at 56.
`
`Apple’s failure cannot be cured with new evidence or argument. See Intelligent Bio-
`
`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Nor can
`
`Apple offer new combinations with Meadows. See Sirona Dental Sys. GmbH v.
`
`Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018). Since Apple’s Petition
`
`fails to show that “providing a frequency, selected from multiple possible
`
`frequencies, to the entire touch pad” was obvious over the cited prior art, the Petition
`
`1739376
`
`3
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`fails, and the Board’s Final Written Decision should confirm that Apple failed to
`
`prove obviousness of the instituted claims.
`
`Even setting aside Apple’s inability to prove obviousness under the Federal
`
`Circuit’s claim construction, Apple’s petition still fails. First, Apple’s proposed
`
`combinations lack several other claim limitations. Second, Apple fails to offer
`
`evidence establishing a motivation to combine. Finally, Apple fails to show that a
`
`Person of Ordinary Skill in the Art (“POSITA”) would have reasonably expected the
`
`proposed combinations to work in achieving the claimed invention. For these
`
`reasons as well, the Board’s Final Written Decision should confirm that Apple failed
`
`to prove obviousness of any challenged claim by a preponderance of the evidence.
`
`II. BACKGROUND
`
`A. The ’183 Patent
`
`The ’183 patent addresses the problem of unintended actuation of small touch
`
`terminals in capacitive-responsive switching circuits—providing the foundation
`
`upon which today’s touchscreen technology is built. Ex. 2002, ¶ 15. Capacitive-
`
`response switching circuits, in contrast to manual switches, can be used in “zero
`
`force” touch switches. These switches have no moving parts and do not require direct
`
`contact to switch loads. Ex. 1001 (2:39-41). “Rather, these switches operate by
`
`detecting the operator’s touch and then use solid state electronics to switch the
`
`loads.” Id., 2:41-44. Zero force touch switches in touchpad arrays make use of a
`
`1739376
`
`4
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`human operator’s capacitance, by detecting the change in capacitive coupling
`
`between a touch terminal and ground caused by the operator’s touch. Id., 3:44-46,
`
`53-56. A human operator need not come into conductive contact with the touch
`
`terminal, but instead can activate the switch when in close proximity. Id., 3:57-59.
`
`Capacitive response circuits are susceptible to unintended actuation from
`
`environmental conditions, such as surface contamination. Id., 4:18-24. For instance,
`
`when an electrically-conductive contaminant path is present on the surface of a
`
`touchpad array, connecting two adjacent touch terminals, a touch of one terminal
`
`may register as a touch of the other terminal, frustrating the user. Id., 4:10-27.
`
`To solve this problem, the ’183 Patent teaches using an oscillator providing a
`
`periodic output signal, a microcontroller that selectively provides signal output
`
`frequencies to small-sized input touch terminals, and a detector circuit that responds
`
`to signals from the oscillator via the microcontroller and the presence of an
`
`operator’s capacitance to ground. Id., Abstract, 6:60-7:5. Critically, the inventors
`
`determined that operating the output signals at “a higher frequency than prior art
`
`touch sensing circuits” would mitigate unintended actuation, by decreasing the
`
`relative impedance of the conductive path through the dielectric substrate, relative
`
`to the impedance of any surface-contaminant path. Id., 8:9-14; Ex. 2002, ¶¶ 19-23.
`
`The unintended actuation problem is particularly acute in dense arrays of
`
`touch circuits, as illustrated in Figure 11:
`
`1739376
`
`5
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`
`
`Prior to the ’183 patent, solutions for preventing unintended touch pad
`
`actuation in dense arrays included placing guard rings about each touch pad, and
`
`adjusting the detection sensitivity of the threshold voltage, such that the operator’s
`
`finger had “to entirely overlap a touch terminal and come into contact with its
`
`dielectric facing plate before actuation occurs.” Id., 4:1-14; Ex. 2002, ¶ 28.
`
`The inventors took a different approach. By analyzing the impedance of
`
`contaminants, the inventors concluded that most unintended actuation could be
`
`avoided by setting the oscillator frequency at 50 kHz, and preferably at 800 kHz or
`
`higher. Ex. 1001, 8:9-14, 11:4-11. More specifically, as described in the
`
`specification, the inventors conducted extensive testing to determine the required
`
`frequency ranges. For example, with reference to Figure 3A, the ’183 Patent
`
`1739376
`
`6
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`describes tests designed to find the ideal frequency ranges that, for a particular
`
`surface and array, would provide a substantial enough “impedance difference
`
`between the paths to ground of the touched pad 57 and adjacent pads 59.” Id., 11:1-
`
`9 (“This … result[s] in a much lower incidence of inadvertent actuation of adjacent
`
`touch pads to that of the touched pad”); id., 11:19-25, 17:11-67 (describing tests
`
`performed to reduce crosstalk due to contaminants); id., Fig. 9 (showing signal to
`
`noise ratio versus body capacitance); Ex. 2002, ¶¶ 25-29.
`
`In addition to the use of high oscillator frequencies, the ’183 patent discloses
`
`“a floating common and supply that follow the oscillator signal to power the
`
`detection circuit.” Ex. 1001, 6:1-22, 18:66-19:6. The floating common provides a
`
`reference voltage that is 5V away from the high-frequency oscillator signal, thus
`
`enabling the system to compare signals that are only 5V apart. This 5V differential
`
`minimizes noise that otherwise would be generated due to the presence of
`
`contaminants on the touch pad. Id., 4:18-20, 5:48-53, 16:12-24; Ex. 2002, ¶ 25.
`
`In Figure 11’s array, the frequencies selected through the front-end testing are
`
`supplied to each row. The microcontroller activates each row of the touch circuits
`
`by selectively providing a signal from the oscillator to individual rows of the touch
`
`circuit. “In 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).” Ex. 1001, 18:43-49. Supplying high frequencies in this
`
`1739376
`
`7
`
`

`

`manner substantially reduces unintended actuation (crosstalk), without requiring
`
`“any physical structure to isolate the touch terminals,” which allows the terminals to
`
`Case IPR2019-00359
`Patent No. 5,796,183
`
`be more closely spaced together. Id., 18:66-19:6.
`
`B.
`
`The Cited References
`
`Apple’s Petition relies on the following references:
`
`1.
`
`Chiu
`
`Chiu discloses a capacitive switch geometry for use in home appliances. Ex.
`
`1005, 1:65-2:2. In the “conventional” switch geometry of the time, each touch pad
`
`overlapped both a transmitting electrode and a receiving electrode. Id. As a result,
`
`the touch pad area was more than twice what would be required to overlap just the
`
`transmitting or receiving electrode(s) alone. Id., 6:9-14; Ex. 2002, ¶ 30.
`
`Chiu purports to reduce the touch pad size by more than 50%, without
`
`sacrificing coupling capacitance, by removing the transmitter electrode from the
`
`substrate, and replacing it with a discrete capacitor. This allows the touch pad to be
`
`reduced to the area of the receiver electrode alone, without reducing coupling
`
`capacitance. Ex. 1005, 6:15-30. Figures 5A-5B schematically illustrate the upper
`
`and lower faces of a dielectric substrate 44 according to Chiu’s arrangement:
`
`1739376
`
`8
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`
`
`On the upper face (Fig. 5A), each touch pad 42 has an associated conductive
`
`path 56, extending to a terminal point 60. Separate discrete capacitors 52 are
`
`provided for each touch pad. On the lower face (Fig. 5B), receiver electrodes 48 are
`
`provided, with one receiver electrode for each touch pad. Each receiver electrode is
`
`placed in an area overlying, and bounded by, the area of its associated touch pad 42.
`
`The receiver electrodes 48 in each column are serially connected together by a
`
`conductive path 49, which also connects each column to the signal detection
`
`circuitry 58. Id., 7:1-35; Ex. 2002, ¶ 32.
`
`Figure 6A shows Chiu’s control circuit:
`
`1739376
`
`9
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`
`
`Microprocessor 90 sequentially generates a scan pulse for each row of touch
`
`terminals. Id., 8:45-55. Signal detection circuitry 58 senses the scan signal coupled
`
`to each column of touch cells via output lines 49, and detects any attenuation of the
`
`column output line signal, which signifies a touch. Id., 8:63–9:6.
`
`2.
`
`Schwarzbach
`
`Schwarzbach discloses an appliance control system, in which a central control
`
`unit communicates with remote slave units over common power lines. Ex. 1014, 1:7-
`
`13, 2:3-6. Schwarzbach does not disclose a capacitive touchpad or keypad. See Ex.
`
`1739376
`
`10
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`2003 at 243:21-244:6 (Apple’s expert Phillip Wright, admitting that Schwarzbach
`
`uses a “mechanical switch keyboard, rather than a touch keyboard”).
`
`In Schwarzbach, the central control unit and slave units each include a user-
`
`programmable microprocessor. Appliances and light fixtures are plugged into the
`
`slave units, which are plugged into the outlet sockets of a building’s power lines.
`
`Schwarzbach’s
`
`system
`
`enables manual or
`
`automatic
`
`transmission of
`
`command/status signals from the central control unit to the slave units, or vice versa,
`
`via the building’s power lines. Id., Abstract; Ex. 2002, ¶ 35.
`
`The central control unit includes a display panel, a microprocessor, and a
`
`mechanical keyboard. Ex. 1014, 4:28-51. The keyboard is a 3×8 matrix, with row
`
`pins 1 through 8 connected to corresponding microprocessor output terminals. Id.
`
`Key presses are detected by driving output terminals, and scanning for closed keys.
`
`Id. All keyboard pins are “scanned once during each cycle of AC line voltage.” Id.,
`
`4:60-62. Schwarzbach uses an “AC line voltage” with “60 Hz” frequency. Id., 7:10-
`
`17, 12:32-38. Thus, Schwarzbach scans its keys with a 60 Hz signal. Ex. 2004, ¶ 37.
`
`3.
`
`Lawson
`
`Lawson discloses a microwave oven 20 with a capacitive touch panel 21. The
`
`touch panel 21 includes a display 22 with a number of LEDs, which display
`
`information relevant to the operation of the microwave. Ex. 1032, 2:28-44. Different
`
`pad functions may have different effects on different display modes, for instance, in
`
`1739376
`
`11
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`a timed cooking example. See, e.g., id., 26:61-27:25, Table 1; Ex. 2002, ¶ 37.
`
`4. Meadows
`
`Meadows discloses a capacitive touch panel system “positioned face-to-face
`
`with the display screen 16 of a display device 18.” Ex. 1013, 3:29-37. Meadows
`
`discloses that the “display device” may be a “cathode-ray tube” (CRT) display. Id.
`
`In Meadows, the CRT display generates “flyback or retrace pulse[s]” at
`
`“frequencies of about 15-200 kHz.” Id., 6:10-35. These flyback pulses induce noise
`
`on the touch panel system, which can overwhelm the touch detection signal. Id. To
`
`address this, Meadows randomly varies its measurement signal frequency over the
`
`range of “150-250 kHz.” Id., 6:35-61. The 15-200 kHz noise signals from the flyback
`
`pulses “are incoherent with the substantially random measurement signals.” Id.,
`
`6:40-48. Thus, by randomly varying the measurement signal frequency, and using a
`
`“lock-in” detector to detect only signals at the measurement frequency, Meadows
`
`avoids CRT flyback noise. Id.
`
`5.
`
`Ingraham ’548
`
`Ingraham ’548 discloses a touch control circuit. Ex. 1016 (Abstract). In
`
`Ingraham ’548, the body capacitance of a person actuating the switch is coupled to
`
`a voltage dividing circuit, which provides a logic output that controls a DC trigger
`
`level applied to a TRIAC, or other bilateral solid-state switch. Id., 1:38-66.
`
`Ingraham ’548 was considered during prosecution of the ’183 Patent.
`
`1739376
`
`12
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`6.
`
`Tucker
`
`Tucker discloses a cooktop induction heating system with touch control pads.
`
`In Tucker, a “microprocessor circuit receives as input signals the control signals
`
`generated by [the] touch input circuit.” Ex. 1019, 7:33-35. Based on these signals,
`
`the microprocessor generates an output, indicating which touch pad has been
`
`touched. Id., 7:35-43. This causes the appropriate cooktop to turn on. Id.
`
`Tucker was considered during prosecution of the ’183 Patent.
`
`III. CLAIM CONSTRUCTION
`
`A. Claim Construction Standard
`
`“In an [IPR] proceeding, a claim ... shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). That standard is set forth in Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Under Phillips, claims should generally
`
`be given “their ordinary and customary meaning,” as understood by “a person of
`
`ordinary skill in the art in question at the time of the invention.” Id. at 1312-1313.
`
`The most important source of meaning is “the words of the claims
`
`themselves.” Id. The second-most important source is the specification. Id. at 1315.
`
`The third-most important source is “the patent’s prosecution history.” Id. at 1317. In
`
`construing a term, the Board “may look to extrinsic evidence so long as the extrinsic
`
`evidence does not contradict … the intrinsic record.” Helmsderfer v. Bobrick
`
`Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008).
`
`1739376
`
`13
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`B.
`
`“Selectively Providing Signal Output Frequencies”
`
`In its Institution Decision, the Board “preliminarily construe[d] the term
`
`‘selectively providing signal output frequencies’” to require “selecting a row or
`
`portion of the array of touch pads” that receives the scan signal. Paper 12 at 31-32.
`
`The Board expressly rejected Nartron’s argument that this term requires selection of
`
`a frequency, from among multiple possible frequencies. Id. However, as the Board
`
`noted, the Federal Circuit issued a ruling pertinent to the construction of this term in
`
`the Samsung appeal. Id. Thus, the Board “encourage[d] the parties to address the
`
`[construction of this] term … further in their papers,” and specifically “encourage[d]
`
`the parties to address in their papers the import of the Samsung Appeal Opinion on
`
`the construction of [this] term.” Id. at 29-30.
`
`In Samsung, the Federal Circuit expressly construed “selectively providing
`
`signal output frequencies” to require selection of a frequency, from among multiple
`
`possible frequencies. Samsung, 775 Fed. Appx. at 697. That construction is binding
`
`on the Board. See Trading Techs. 2014 WL 1645838, at *3. The Federal Circuit’s
`
`construction is also correct on the merits. Thus, the Board must now construe
`
`“selectively providing signal output frequencies” to mean “providing a frequency,
`
`selected from multiple possible frequencies, to the array of input touch terminals.”
`
`1.
`
`The Federal Circuit Issued an Explicit Claim Construction,
`Which Is Binding on the Board
`
`In Samsung, Samsung filed IPR2016-00908, challenging various claims of the
`
`1739376
`
`14
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`’183 patent. Samsung, 775 Fed. Appx. at 693. The Board found that Samsung failed
`
`to prove obviousness, because: (i) it did not prove a motivation to combine the
`
`references to “selectively provid[e] signal output frequencies;” and (ii) it did not
`
`prove a reasonable expectation of success in doing so. Id. at 694. While the Federal
`
`Circuit reversed the Board’s decision on motivation to combine, id. at 694-696, it
`
`vacated the Board’s decision on reasonable expectation of success, and remanded
`
`for further proceedings on that issue1. Id. at 696-697.
`
`The Federal Circuit’s remand on reasonable expectation of success centered
`
`on its construction of “selectively providing signal output frequencies.” Id. at 696-
`
`697. The Federal Circuit held that the Board’s Final Written Decision (“FWD”) on
`
`the reasonable expectation issue “rest[ed] on an implicit claim construction,” under
`
`which “the microcontroller [must] provide different frequencies to different rows of
`
`touch pads.” Id. The Federal Circuit “conclude[d] that the Board’s implicit claim
`
`construction was erroneous,” because the claims do not actually require providing
`
`different frequencies to different rows of the touchpad. Id. Rather, the Federal
`
`Circuit held that the claims “only require[] that different frequencies be provided to
`
`the entire pad.” Id. Based on that construction, the Federal Circuit remanded for the
`
`
`1 The Samsung case (IPR2016-00908) is still on remand at the Board. The parties
`
`have filed briefs on the “reasonable expectation of success” issue, and they are
`
`awaiting the Board’s Final Written Decision.
`
`1739376
`
`15
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`Board to determine “whether there was a reasonable expectation that the
`
`combination could have been modified to ‘provide’ a frequency, selected from
`
`multiple possible frequencies, to the entire touch pad.” Id. (emphasis added).
`
`The Federal Circuit repeatedly, and explicitly, characterized its ruling as one
`
`of claim construction. The Federal Circuit stated: “This is not a question of which
`
`expert to credit, contrary to the Board’s approach, but rather a legal determination
`
`regarding claim construction.” Id. at 696 (emphasis added). It further stated:
`
`“Reasonable expectation of success constitutes a question of law where, as here, it
`
`rests on claim construction and there is no extrinsic evidence offered.” Id.
`
`(emphasis added). Finally, it stated: “[b]ased on the proper claim construction, we
`
`vacate and remand for the Board to consider whether Samsung has shown that there
`
`would have been a reasonable expectation of success.” Id. at 697 (emphasis added).
`
`Based on these statements, the Federal Circuit plainly made a legal
`
`determination on the proper construction of “selectively providing signal output
`
`frequencies.” Under the Federal Circuit’s construction, “selectively providing signal
`
`output frequencies” means “‘provid[ing] a frequency, selected from multiple
`
`possible frequencies, to the entire touch pad.” Id. (emphasis added). The Federal
`
`Circuit repeatedly characterized this ruling as one of claim construction.
`
`Furthermore, this ruling was essential to the Federal Circuit’s decision to vacate and
`
`remand for further proceedings. Id.
`
`1739376
`
`16
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`Unlike a district court’s constructions,
`
`the Federal Circuit’s claim
`
`constructions are binding on lower tribunals, even if the party against whom they
`
`are asserted did not have an opportunity to contest them before the Federal Circuit.
`
`See Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2014 WL 1645838, at
`
`*3 (N.D. Ill. 2014) (“The Federal Circuit’s decision is binding as a matter of law and
`
`a district court must apply the Federal Circuit’s claim construction even where a
`
`non-party to initial litigation would like to present new arguments”); Pass &
`
`Seymour, Inc. v. Hubbell Inc., 2011 U.S. Dist. LEXIS 1135, at *4 (N.D.N.Y.2011)
`
`(“[D]istrict courts are bound to apply the Federal Circuit’s claim constructions, even
`
`as against non-parties to the initial litigation”) (emphasis added).
`
`The rule requiring lower tribunals to apply the Federal Circuit’s claim
`
`constructions flows directly from Markman v. Westview Instruments, 517 U.S. 370
`
`(1996). “In an effort to promote uniformity and predictability in the treatment of a
`
`patent, the Supreme Court in Markman held that claim construction is decided as a
`
`matter of law and would thus be subject to the doctrine of stare decisis.” Eolas
`
`Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, 2011 WL 11070303, at *2 (E.D.
`
`Tex. Sept. 23, 2011). As courts acknowledge, “the principle of stare decisis would
`
`lose all meaning if a later defendant could unbind itself [from the Federal Circuit’s
`
`prior construction] by merely framing the issue differently.” Id. Accordingly, even
`
`though it may be “troublesome” to apply the Federal Circuit’s construction against
`
`1739376
`
`17
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`a party who did not have an opportunity to challenge it, “when the Federal Circuit
`
`construes a term, it does so as a matter of law and its holding is binding.” Id.
`
`(emphasis added) (citing Amgen, Inc. v. Hoffmann–LaRoche Ltd., 494 F.Supp.2d 54,
`
`60–61 (D.Mass.2007) (“Stare decisis … is not narrowly confined to parties and
`
`privies…. When construing the claims of a patent, the Federal Circuit is creating
`
`legal precedent. In accordance with the principles of stare decisis, this Court is
`
`bound to follow the [Federal Circuit’s] prior constructions.”)
`
`Here, the Federal Circuit issued a binding legal decision that “selectively
`
`providing signal output frequencies” in the ’183 patent means “provid[ing] a
`
`frequency, selected from multiple possible frequencies, to the entire touch pad.”
`
`Samsung, 775 Fed. Appx at 697. Numerous district courts have held that the Federal
`
`Circuit’s claim constructions are legal pronouncements on the proper interpretation
`
`of a patent claim, which have uniform, nationwide effect on the patent in question.
`
`Trading Techs, 2014 WL 1645838, at *3; Hubbell, 2011 U.S. Dist. LEXIS 1135, at
`
`*4; Eolas, 2011 WL 11070303, at *2; Amgen, 494 F.Supp.2d 54, 60–61. Now that
`
`the Board is obligated to apply the same claim construction standard as a district
`
`court (see 37 C.F.R. § 42.100(b)), the Federal Circuit’s constructions are just as
`
`binding on the Board as they are on district courts.
`
`Accordingly, the Federal Circuit’s construction of “selectively providing
`
`signal output frequencies” in Samsung is binding on the Board as stare decisis, even
`
`1739376
`
`18
`
`

`

`Case IPR2019-00359
`Patent No. 5,796,183
`
`though Apple did not participate in the Samsung Appeal.
`
`2.
`
`Adopting the Federal Circuit’s Construction Would Not Cause
`the Claims to Lack Written Description Support
`
`In its Institution Decision, the Board expressed concern that “constru[ing] …
`
`‘selectively providing signal output frequencies’ to require the microcontroller [to]
`
`select signal output frequencies from multiple available frequencies” would result in
`
`“all of the challenged claims … lack[ing] written description support.” Paper 12 at
`
`29. The Federal Circuit’s construction poses no such concern, for three reasons.
`
`First, § 112 issues, such as written description, cannot be adjudicated in this
`
`Inter Partes Review. Volkswagen Grp. of Am., Inc. v. Emerachem Holdings, LLC,
`
`No. IPR2014-01555, 2016 WL 9447060, at *7 (P.T.A.B. Jan. 22, 2016). Thus, the
`
`Board’s “written description” concerns are outside the scope of this proceeding.
`
`Second, the Board’s concerns reflect an operational requirement in the claim
`
`language that does not exist. Paper 12 at 29. Nothing in the Federal Circuit’s
`
`construction requires that the microcontroller “select” from multiple possible
`
`frequencies “on the fly,” during operation of the claimed device. Rather, the Federal
`
`Circuit’s construction merely requires “provid[ing] a frequency, selected from
`
`multiple possible frequencies, to the entire touc