Case: 21-1035 Document: 64 Page: 1 Filed: 04/25/2023
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`NOTE: This disposition is nonprecedential.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.
`
`

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`Case: 21-1035 Document: 64 Page: 2 Filed: 04/25/2023
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`2
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`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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`Case: 21-1035 Document: 64 Page: 3 Filed: 04/25/2023
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`APPLE INC. v. UUSI, LLC
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`3
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`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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`APPLE INC. v. UUSI, LLC
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`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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`Case: 21-1035 Document: 64 Page: 5 Filed: 04/25/2023
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`APPLE INC. v. UUSI, LLC
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`5
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`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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`APPLE INC. v. UUSI, LLC
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`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.
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`APPLE INC. v. UUSI, LLC
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`7
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`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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`Case: 21-1035 Document: 64 Page: 8 Filed: 04/25/2023
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`APPLE INC. v. UUSI, LLC
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`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
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`9
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`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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`APPLE INC. v. UUSI, LLC
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`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
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`11
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`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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`APPLE INC. v. UUSI, LLC
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`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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`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.
`
`