IPR obviousness finding vacated for erroneous motivaton to combine and reasonable expectation of success determinations


Samsung Electronics Co., Ltd. v. UUSI, LLC, DBA NARTRON

Docket No. 2018-1310 (IPR2016-00908)
NEWMAN, LOURIE, DYK
June 18, 2019
Non-precedential

Brief summary: IPR obviousness decision vacated and remanded (e.g., “improve similar devices in the same way, using the technique is obvious” (KSR), “a reasonable expectation of achieving what is claimed” (Int. Bio-Sys., FC 2016)).

Summary: Samsung appealed Board IPR final written decision (FWD) that Samsung did not show UUSI’s US 5,796,183 related to “capacitive responsive electronic switching circuits” using touchpads to be obvious in view of the combination of three prior art US patents (Gerpheide, Ingraham, and Caldwell, as well as Rympalski relied upon by the Board a reinforcing reference) by a preponderance of the evidence. The Board concluded that Samsung did not show a motivation to combine the references or “a reasonable expectation of success in achieving the claimed limitation of “providing signal frequencies.’” The FC panel reviewed the Board’s ultimate obviousness determination de novo and its underlying factual findings for substantial evidence. In this appeal, and “[i]n support of the Board’s decision, UUSI argued that Gerpheide was not analogous art but the FC panel disagreed “as it is directed to the same field of endeavor (i.e., capacitive touch device design)” (Unwired Planet, FC 2016). UUSI also argued “that the Board was correct in finding that Gerpheide and the ‘183 patent were directed to different problems and solved those problems in different ways”, but the FC panel agreed with Samsung that the Board’s conclusion (i.e., its “categorical rejection of the teachings from a single input device to those of a multi input device”) was legally erroneous under KSR (US 2007 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”)) Thus, the FC panel disagreed with the Board found a motivation to combine the references. The FC panel found “[t]he basis of the Board’s decision as to reasonable expectation of success” to be “not clear” but found its “implicit claim construction” of one limitation to be erroneous (e.g., “[t]he claim language is itself is unclear”, “[a] reasonable expectation of success…only requires that different frequencies be provided to the entire pad”, “[t]he claims do not impose” the other limitations argued by UUSI; Intelligent Bio-Sys., FC 2016 (“the challenger must show ‘a reasonable expectation of achieving what is claimed in the patent-at-issue”)). Samsung also argued that three claims “on which the Board declined to institute IPR” “must be remanded back to the Board” under SAS (US 2018), and the FC panel agreed since Samsung did not waive the argument by “timely rais[ing] the issue in its opening brief filed less than one month after SAS was decided” (BioDelivery, FC 2018) and UUSI did not show “that the Board’s error in instituting IPR on less than all challenged claims was harmless” (PGS Geophysical, FC 2018). The Board’s decision was therefore vacated and remanded.

This entry was posted in Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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