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NOTE: This disposition is nonprecedential.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
2 APPLE INC. v. UUSI, LLC
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.
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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]
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4 APPLE INC. v. UUSI, LLC
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.
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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”).
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6 APPLE INC. v. UUSI, LLC
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.
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8 APPLE INC. v. UUSI, LLC
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
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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
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10 APPLE INC. v. UUSI, LLC
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.
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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
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12 APPLE INC. v. UUSI, LLC
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
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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.
