By Cheryl Beise, J.D.
Samsung presented sufficient evidence that the challenged claims of patent directed to a multi-input touchpad would have been obvious in light of two prior art combinations.
The Patent Trial and Appeal Board erred by concluding that Samsung failed to show evidence that a person of ordinary skill in the relevant art would not be motivated to combine prior art to arrive at the multi-input capacitator detection invention claimed by a patent owned by UUSI, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s categorical rejection of the teachings from a single input device to those of a multi input device was unsupportable and the Board’s implicit claim construction when considering likelihood of success was erroneous. The Board’s decision was vacated and the case remanded. On remand, the Board also was directed to review three additional claims the Board originally declined to review in light of the intervening Supreme Court decision in SAS Inst. Inc. v. Iancu (Samsung Electronics Co. v. UUSI, LLC, June 18, 2019, Dyk, T.).
UUSI, L.L.C. owns U.S. Patent No. 5,796,183 (’183 patent), which is directed to "a capacitive responsive electronic switching circuit." The patent relates to a device with a multi input touchpad that detects the location of a user’s touch by measuring capacitance change. Samsung Electronics Co., Ltd. filed a petition for inter partes review ("IPR") of several claims of the ’183 patent on the ground of obviousness. The Board instituted IPR on all but three (claims 37, 38, and 39) of the challenged claims.
Samsung argued that the claims were unpatentable as obvious in light of two separate combinations of prior art, each of which included U.S. Patent Nos. 5,565,658 (Gerpheide), 5,087,825 (Ingraham), and 5,594,222 (Caldwell). The combination of Ingraham/Caldwell was alleged to teach all claim limitations except the limitation of "providing signal frequencies" to the touchpads. The limitation was alleged to require multiple frequencies (not taught by Ingraham/Caldwell). This limitation was alleged to have been taught by Gerpheide. The Board ultimately held that Samsung failed to show that the claims were unpatentable as obvious by a preponderance of the evidence. Samsung appealed.
Motivation to combine. The Board concluded that Samsung failed to show evidence of a motivation to combine Gerpheide with Ingraham/Caldwell. According to the Board, Gerpheide taught reducing electrical interference in single point capacitive touchpads, whereas the’183 patent was directed to a different problem, namely unintended actuation of multi input capacitive touch pads placed in a close array, such as in a keyboard. Further, a person of skill in the art would not have looked to its teachings when dealing with a multi-point input device such as the multi-touch pad devices in Ingraham, Caldwell, and the ’183 patent.
The court, however, found that Gerpheide is analogous art as it is directed to the same field of endeavor (i.e., capacitive touch device design) as the ’183 patent. The court also found the Board’s categorical rejection of the teachings from a single input device to those of a multi input device to be unsupportable. Samsung presented uncontested evidence that the combination of Ingraham and Caldwell would experience electrical interference, and Gerpheide taught a way to address electrical interference in capacitive touch devices. "The fact that Gerpheide and Ingraham/Caldwell involved different types of capacitive touch devices (single versus multi input) does not undermine the motivation to combine the teachings of Gerpheide with Ingraham/Caldwell since both devices can experience electrical interference," the court said.
Expectation of success. The Board also found that Samsung failed to show a reasonable expectation of success in achieving the claimed limitation of "providing signal frequencies" in combining Gerpheide with Ingraham/Caldwell.
The Federal Circuit first noted that for an expired patent, such as the ’183 patent, the claims are construed according to the Phillips standard rather than the broadest reasonable interpretation (BRI) standard. The court then concluded that the Board’s implicit claim construction was erroneous. "The claim language itself is unclear as to whether the same frequency (selected from multiple possible frequencies) or different frequencies are to be sent to the different rows of the touchpad," the court noted. The claims are not limited to situations in which different frequencies are provided to different rows. A reasonable expectation of success thus only requires that different frequencies be provided to the entire pad. Applying the proper claim construction, the question is whether there would have been a reasonable expectation of success in modifying the Ingraham/Caldwell combination to "provide frequencies" to the touch pad in light of the teachings of Gerpheide—i.e., whether there was a reasonable expectation that the combination could have been modified to "provide" frequency, selected from multiple possible frequencies, to the entire touch pad.
Claims 37, 38, and 39. Samsung also argued that the Board should consider the patentability of challenged claims 37, 38, and 39, on which the Board declined to institute IPR, in accordance with SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). The court agreed. Contrary to UUSI’s, assertion, Samsung did not waive this argument as it was timely raised Samsung’s opening brief filed less than a month after SAS was decided.
The Board’s decision was vacated and the case remandedfor further proceedings.
This case is No. 2018-1310.
Attorneys: Naveen Modi (Paul Hastings LLP) for Samsung Electronics Co., Ltd. Lawrence Milton Hadley (Glaser Weil Fink Howard Avchen & Shapiro LLP) and Joel Lance Thollander (McKool Smith, PC) for UUSI, LLC d/b/a Nartron.
Companies: Samsung Electronics Co., Ltd.; UUSI, LLC d/b/a Nartron
MainStory: TopStory Patent FedCirNews
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