Apple Inc. v. Uusi, LLC

• Court: Court of Appeals for the Federal Circuit
• Decided: April 25, 2023
• Docket: 21-1035
• Status: Unpublished

Opinion

Case: 21-1035 Document: 64 Page: 1 Filed: 04/25/2023

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

APPLE INC., Appellant

v.

UUSI, LLC, DBA NARTRON, Cross-Appellant

KATHERINE K. VIDAL, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________

2021-1035, 2021-1036, 2021-1057, 2021-1058 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019- 00358, IPR2019-00359. ______________________

Decided: April 25, 2023 ______________________

LAUREN ANN DEGNAN, Fish & Richardson P.C., Wash- ington, DC, argued for appellant. Also represented by CHRISTOPHER DRYER; NITIKA GUPTA FIORELLA, Wilming- ton, DE. Case: 21-1035 Document: 64 Page: 2 Filed: 04/25/2023

LAWRENCE MILTON HADLEY, Glaser Weil Fink Howard Avchen & Shapiro LLP, Los Angeles, CA, argued for cross- appellant. Also represented by STEPHEN UNDERWOOD.

BENJAMIN T. HICKMAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by MARY L. KELLY, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED. ______________________

Before DYK, BRYSON, and PROST, Circuit Judges. PROST, Circuit Judge. Apple Inc. (“Apple”) filed two petitions for inter partes review of various claims of U.S. Patent No. 5,796,183 (“the ’183 patent”), which UUSI, LLC, d/b/a Nartron (“Nartron”) owns. The Patent Trial and Appeal Board (“Board”) deter- mined that some claims were shown to be unpatentable while others weren’t. Apple, Inc. v. UUSI, LLC, IPR2019- 00358, Paper 26, 2020 WL 4546916, at *44 (P.T.A.B. Aug. 4, 2020) (“Final Written Decision”); Apple, Inc. v. UUSI, LLC, IPR2019-00359, Paper 27, 2020 WL 4542561, at *37 (P.T.A.B. Aug. 4, 2020). 1 Apple appeals, and Nar- tron cross-appeals. We affirm as to both the appeal and cross-appeal.

1 Because the issues on appeal are common to both underlying final written decisions and the outcomes do not depend on any differences in the record, the remainder of this opinion cites only the Petition and Final Written Deci- sion in the ’358 proceeding for simplicity. Case: 21-1035 Document: 64 Page: 3 Filed: 04/25/2023

APPLE INC. v. UUSI, LLC 3

BACKGROUND I The ’183 patent relates to capacitive responsive elec- tronic switching circuits. Claims 37, 94, and 97 are repre- sentative for purposes of this appeal. Claim 37 recites: 37. A capacitive responsive electronic switching circuit for a controlled device comprising: an oscillator providing a periodic output signal having a predefined frequency, wherein an oscilla- tor voltage is greater than a supply voltage; 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 sec- ond input touch terminals; the first and second touch terminals defining areas for an operator to provide an input by proximity and touch; and a detector circuit coupled to said oscillator for re- ceiving said periodic output signal from said oscil- lator, and coupled to said first and second touch terminals . . . . ’183 patent claim 37 (emphasis added); J.A. 233. Claim 94 recites: 94. A capacitive responsive electronic switching circuit for a controlled keypad device comprising: an oscillator providing a periodic output signal having a predefined frequency; [and] Case: 21-1035 Document: 64 Page: 4 Filed: 04/25/2023

a microcontroller using the periodic output signal from the oscillator . . ., and wherein a peak voltage of the signal output frequencies is greater than a supply voltage . . . . ’183 patent claim 94 (emphasis added); J.A. 238. Claim 97 recites: 97. The capacitive responsive electronic switching circuit as defined in claim 94, wherein each signal output frequency selectively provided to each row of the closely spaced array . . . is selected from a plurality of Hertz values. ’183 patent claim 97 (emphasis added); J.A. 239. II Apple petitioned for inter partes review challenging, in relevant part, claims 28, 32, 36–39, 83–88, 90–94, 96–99, 101–09, and 115–16 as obvious. The Board determined that Apple proved claims 28, 32, 36, 83–85, 90–94, 96, 101–106, and 115–116 were obvious but failed to prove claims 37–39, 86–88, 97–99, and 107–09 were obvious. Ap- ple appeals with respect to claims 37–39, 86–88, 97–99, and 107–09. Appellant’s Br. 15–16. Nartron cross-appeals with respect to claims 83–85, 90–94, 96, and 101–106. Ap- pellee’s Br. 56–57, 74. 2 For simplicity, we discuss the is- sues on appeal and cross-appeal in terms of representative claims 37, 94, and 97.

2 Nartron appears to cross-appeal with respect to claims that the Board upheld. See, e.g., Appellee’s Br. 74 (asking for this court to determine that claims “83–88, 90–94, 96–99, and 101–104” were nonobvious). For claims on which Nartron prevailed, a cross-appeal is improper. We therefore do not consider Nartron’s arguments with re- spect to such claims. Case: 21-1035 Document: 64 Page: 5 Filed: 04/25/2023

APPLE INC. v. UUSI, LLC 5

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION I Apple’s appeal challenges: (A) the Board’s refusal to consider an argument that the combination of Chiu and Schwarzbach taught “an oscillator voltage . . . greater than a supply voltage” for claim 37; and (B) the Board’s determi- nation that Apple failed to prove a motivation to combine and reasonable expectation of success in combining Chiu, Schwarzbach, and Meadows for claim 97. 3 We review the Board’s determination that Apple failed to raise an argu- ment in its Petition for abuse of discretion. Intelligent Bio- Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). We review the Board’s motivation-to-com- bine and reasonable-expectation-of-success findings for substantial evidence, id. at 1366, which is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion,” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324 (Fed. Cir. 2017). A Apple, in relevant part, challenged claim 37 as obvious in view of Chiu and Schwarzbach. See J.A. 264. In its Final Written Decision, the Board determined that Apple’s Peti- tion argued only that Schwarzbach alone taught the limi- tation of claim 37 requiring “an oscillator voltage . . . greater than a supply voltage.” Final Written Decision, 2020 WL 4546916, at *32–34. For the reasons outlined be- low, this reading of Apple’s Petition was not an abuse of discretion, so we affirm the Board’s determination that Ap- ple failed to prove that claim 37 was unpatentable.

3 U.S. Patent No. 4,561,002 (“Chiu”); U.S. Patent No. 4,418,333 (“Schwarzbach”); U.S. Patent No. 4,922,061 (“Meadows”). Case: 21-1035 Document: 64 Page: 6 Filed: 04/25/2023

Apple asserts that the Board improperly failed to rec- ognize that its Petition presented two theories that the prior art taught “an oscillator voltage . . . greater than a supply voltage”: (1) that Schwarzbach alone taught this limitation; 4 and (2) that Chiu and Schwarzbach in combi- nation taught this limitation. Appellant’s Br. 29–34; see J.A. 3885–88 (citing J.A. 265–69, 276–78). As support, Ap- ple points to one particular paragraph in its Petition as raising a Chiu-Schwarzbach-combination argument. See Oral Arg. at 19:57–20:55 (Apple counsel stating that Apple relied on a particular paragraph as raising the Chiu- Schwarzbach-combination and the preceding paragraph as raising the Schwarzbach-alone theory). 5 That paragraph, in its entirety, reads: As previously discussed, a [person of ordinary skill in the art] would have understood that the TMS 1670 microprocessor of Chiu would be operated at the supply voltage of the identical microprocessor described in Schwarzbach, such that the output voltage of the signal generator circuitry of the “mi- croprocessor 90” (“oscillator”) is greater than its supply voltage. See Section III.A.4, supra . . . . J.A. 278 (italics in original). Section III.A.4 of Apple’s Pe- tition, in turn, refers to part of the overview section about Apple’s allegations that the combination of Chiu and Schwarzbach renders both claims 37 and 94 obvious. See J.A. 264–69. Section III.A.4 specifically argues that an or- dinarily skilled artisan would have been motivated to com- bine Chiu and Schwarzbach “to operate at the supply

4 The Board determined that Schwarzbach alone did not teach “an oscillator voltage . . . greater than a supply voltage,” and Apple does not challenge that finding on ap- peal. See Appellee’s Br. 28. 5 No. 21-1035, https://oralarguments.cafc.uscourts. gov/default.aspx?fl=21-1035_03082023.mp3. Case: 21-1035 Document: 64 Page: 7 Filed: 04/25/2023

APPLE INC. v. UUSI, LLC 7

voltage [of 16 volts] described in Schwarzbach, such that the output voltage of the signal generator circuitry of [Chiu’s] ‘microprocessor 90’ is greater than its supply volt- age.” J.A. 267; see J.A. 277. And, previously, the Petition describes Chiu’s “signal generat[or] circuitry” as “gen- erat[ing] a scan signal with a peak voltage of 30 volts” in its “overview of Chiu” section. J.A. 264 (emphasis added) (cleaned up). On appeal, Apple contends that it so clearly related Chiu’s “peak voltage of 30 volts” to claim 37’s “oscillator voltage” that the Board’s refusal to consider its Chiu- Schwarzbach-combination argument was an abuse of dis- cretion. We disagree. Sure, the Petition invokes Chiu in its discussion of “an oscillator voltage . . . greater than a supply voltage,” but it doesn’t invoke Chiu’s “peak voltage of 30 volts” teaching. Rather, Apple’s Petition invokes Chiu’s “output voltage of the signal generator circuitry of the ‘microprocessor 90.’” J.A. 278. And herein lies Apple’s problem: the “output voltage of [Chiu’s] signal generator circuitry” is not 30 volts. Case: 21-1035 Document: 64 Page: 8 Filed: 04/25/2023

Apple’s color-coded version of Chiu’s Figure 6A is illus- trative:

J.A. 282 (annotations in original). Apple identifies the “sig- nal generator circuitry” in light-blue highlight (inside 90) as the “oscillator” and the “periodic output signal” repre- sented by darker-blue lines (flowing from 90) as the “out- put” of the oscillator. See J.A. 274–75. But the red lines (flowing from 92)? Apple’s Petition (and color-coding) tells us that those are different. Apple’s Petition explains that Chiu’s “‘driver circuit 92’ amplifies the pulse signals from the signal generator circuitry (‘oscillator’)”—i.e., the “oscil- lator voltage”—“to produce the claimed ‘signal output fre- quencies’” shown in red. J.A. 298–99 (first italics added; second italics in original). And it’s the output of Chiu’s driver circuit 92 that’s 30 volts. Chiu at col. 9, ll. 20–23. Chiu doesn’t tell us what the output voltage of its micro- processor 90 is, and Apple doesn’t tell us either. See Appel- lant’s Reply Br. 10 (admitting that Chiu’s 30-volt teaching Case: 21-1035 Document: 64 Page: 9 Filed: 04/25/2023

APPLE INC. v. UUSI, LLC 9

is not the “direct[]” output of the oscillator but instead the voltage of those signals after they are amplified “through driver circuitry 92”). The Board thus did not abuse its discretion in deter- mining that Apple’s reference to “the output voltage of the signal generator circuitry of [Chiu’s] ‘microprocessor 90’ (‘oscillator’)” did not invoke the downstream 30-volt output voltage of Chiu’s driver circuit 92. See Oral Arg. at 3:37–4:15 (Apple’s counsel stating that Chiu’s signal generator circuitry does not include driver circuit 92). In other words, while Apple may have made a general argu- ment that Chiu discloses an oscillator voltage greater than the supply voltage, the evidence upon which it relied did not support such an argument. Under such circumstances, the Board did not err in concluding that Apple failed to make a coherent argument in support of its position. Our conclusion is further supported by Apple’s Petition regarding the obviousness of claim 94, which requires “a peak voltage . . . greater than a supply voltage.” For that claim, Apple explicitly relied on Chiu’s 30-volt teaching to demonstrate the “peak voltage” limitation. J.A. 299–301. Perhaps what Apple meant to argue in its Petition was that claim 37’s “oscillator voltage” should be construed to en- compass the meaning of claim 94’s “peak voltage,” see Ap- pellant’s Reply Br. 10–12, but we can’t fault the Board for failing to make that connection when Apple admits that neither its Petition nor Reply explained that connection, see id. at 10 (describing this connection as an “implicit claim construction argument” that Nartron “raised for the first time in its Sur-Reply before the Board”). B Apple, in relevant part, challenged claim 97 as obvious in view of Chiu, Schwarzbach, and Meadows. See J.A. 315. The Board determined that Apple failed to prove an artisan of ordinary skill would have been motivated to combine or reasonably expected success in combining the prior art in Case: 21-1035 Document: 64 Page: 10 Filed: 04/25/2023

the way that Apple suggested. Final Written Decision, 2020 WL 4546916, at *37. Apple argued that an ordinarily skilled artisan would have “modified” Chiu’s microproces- sor to include a voltage-controlled oscillator like that in Meadows to teach the “plurality of Hertz values” limita- tion. See id. at *36, *40. Apple claimed that a person of ordinary skill would have been motivated to make this modification to “reduce the susceptibility of the . . . circuit to electromagnetic noise” and to “generate reduced amounts of electromagnetic noise,” id. at *36 (cleaned up), and that the results of such a modification “would have been predictable because Meadows describes the use of its techniques in a touch circuit like the one described in . . . Chiu,” id. (cleaned up). But Nartron countered that Apple’s suggested modification “would have involved un- duly complex redesign.” See id. at *36–37. The Board agreed with Nartron and determined that the required re- design mitigated both a motivation to combine and a rea- sonable expectation of success. On appeal, Apple primarily asserts that the Board’s motivation-to-combine and reasonable-expectation-of-suc- cess findings are premised on an improper bodily-incorpo- ration theory. Appellant’s Br. 37. We disagree. Although the Board does use the word “replace” in parts of its analy- sis, the context of that analysis shows that the Board was simply more persuaded by Nartron’s expert that incorpo- rating a voltage-controlled oscillator like that in Meadows into a microprocessor like that in Chiu would have been so complex that an artisan of ordinary skill would not have been motivated to make that combination or had a reason- able expectation that that combination would be success- ful. The Board’s findings are supported by substantial evidence from Nartron’s expert as cited in the Board’s five- page analysis on this point. See Final Written Decision, 2020 WL 4546916, at *35–40. Case: 21-1035 Document: 64 Page: 11 Filed: 04/25/2023

APPLE INC. v. UUSI, LLC 11

II Nartron’s cross-appeal challenges the Board’s claim construction of: (A) the “selectively providing” limitation as seen in claim 37; (B) the “closely spaced array” limitation as seen in claim 37; and (C) the “peak voltage” limitation as seen in claim 94. We review questions of claim construc- tion de novo “to the extent that [they are] decided only on the intrinsic evidence,” as are all three of Nartron’s dis- puted claim constructions. Data Engine Techs. LLC v. Google LLC, 10 F.4th 1375, 1380 (Fed. Cir. 2021). A Nartron primarily argues that the Board misconstrued the “selectively providing” limitation present in claim 37 because the Board’s construction improperly limits “selec- tively providing” “to a selection of rows, not frequencies” and that such a construction conflicts with this court’s de- cision in Samsung. Appellee’s Br. 56–66 (citing Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019) (construing claim 40 of the ’183 patent, which also includes a “selectively providing” limitation and does so in a similar context)). The Board construed “the microcontroller selec- tively providing signal output frequencies to a closely spaced array” as: (1) “not requir[ing] the microcontroller to select signal output frequencies from multiple available frequencies;” (2) “encompass[ing] the microcontroller se- lecting a row or a portion of the array . . . to provide signal output frequencies to;” and (3) “encompass[ing] selection of frequencies by the human designer during the design or construction of the . . . circuit.” Final Written Decision, 2020 WL 4546916, at *15 (emphasis in original) (cleaned up); see also id. at *7–18 (construing this limitation after looking at the claim language, patent specification, prose- cution history, and the Samsung decision). Nartron’s argument that the Board improperly limited “selectively providing” “to a selection of rows, not frequen- cies” fails because the Board did no such thing. The Board Case: 21-1035 Document: 64 Page: 12 Filed: 04/25/2023

merely said that the limitation “encompass[ed]” a selection of rows. That a limitation “encompass[es]” a particular cir- cumstance does not mean that it is limited to that circum- stance. We therefore also reject Nartron’s argument that the Board’s construction in this case runs afoul of our Sam- sung decision. In Samsung, we vacated and remanded the Board’s finding that there would have been no reasonable expectation of success because we determined that it was based on an incorrect implicit claim construction of the “se- lectively providing” limitation as used in claim 40. 775 F. App’x at 696. In that case, the Board had assumed that this limitation “require[d] . . . the microcontroller [to] provide different frequencies to different rows.” Id. We said that construction was wrong: the “selectively provid- ing” limitation was “not limited to situations in which dif- ferent frequencies are provided to different rows.” Id. at 697. We explained that the only requirement was “that dif- ferent frequencies be provided to the entire pad.” Id. We see no conflict between a requirement “that different fre- quencies be provided,” id., and the Board’s determination here that the thing selecting those frequencies need not be the microcontroller, Final Written Decision, 2020 WL 4546916, at *17 (“[T]his language does not specify who or what ‘selects’ a frequency ‘from multiple possible frequen- cies’ . . . .” (cleaned up)). We accordingly affirm the Board’s claim construction of the “selectively providing” limitation. B Nartron asserts that the Board misconstrued “a closely spaced array” as seen in claim 37 since the Board rejected Nartron’s argument that such an array is required to be “sufficiently closely-spaced that, if high frequencies were not used, surface contamination would cause significant crosstalk between adjacent terminals.” Id. at *18; see Ap- pellee’s Br. 68–71. There is no basis in either the claims or the specification of the ’183 patent to conclude that the term “closely spaced array” is limited in the way Nartron Case: 21-1035 Document: 64 Page: 13 Filed: 04/25/2023

APPLE INC. v. UUSI, LLC 13

suggests, and we therefore affirm the Board’s construction of that term. C Nartron also contends that the Board misconstrued “peak voltage” in claim 94. The Board construed “peak voltage” as “the peak voltage of the signal provided to the array of touch terminals.” Final Written Decision, 2020 WL 4546916, at *20. According to Nartron, this construction is wrong because it defines “peak voltage” as the “input” to the array of touch terminals when the claim relates “peak voltage” to the signal “output” frequencies of the microcon- troller. See Appellee’s Br. 72. Nartron’s argument appears to be that an “output” of one thing cannot be an “input” for something else. See id. at 72–74. However, as the Board observed, “signal output frequencies” are signals that flow between the microcontroller and the array of touch termi- nals. Final Written Decision, 2020 WL 4546916, at *10–11. An arrangement in which such a signal has its highest volt- age, i.e., a “peak voltage,” at the input to the array of touch terminals is entirely consistent with the language of claim 94. We therefore affirm the Board’s claim construc- tion. CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm. AFFIRMED COSTS Each party shall bear its own costs.