       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

       SAMSUNG ELECTRONICS CO., LTD.,
                 Appellant

                           v.

            UUSI, LLC, DBA NARTRON,
                     Appellee
              ______________________

                      2018-1310
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00908.
                 ______________________

                Decided: June 18, 2019
                ______________________

   NAVEEN MODI, Paul Hastings LLP, Washington, DC,
argued for appellant. Also represented by CHETAN BANSAL,
STEPHEN BLAKE KINNAIRD, JOSEPH PALYS, MICHAEL
WOLFE.

    LAWRENCE MILTON HADLEY, Glaser Weil Fink Howard
Avchen & Shapiro LLP, Los Angeles, CA, argued for appel-
lee. Also represented by JOEL LANCE THOLLANDER, McKool
Smith, PC, Austin, TX.
                 ______________________
2                 SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC




    Before NEWMAN, LOURIE, and DYK, Circuit Judges.
DYK, Circuit Judge.
    Samsung Electronics Co., Ltd. appeals from the United
States Patent and Trademark Office, Patent Trial and Ap-
peal Board’s (“Board’s”) final written decision in an inter
partes review (“IPR”) proceeding. The Board concluded
that Samsung had failed to establish that the challenged
patent claims were unpatentable as obvious. We vacate the
Board’s decision and remand for further proceedings.
                       BACKGROUND
    UUSI, L.L.C. owns U.S. Patent No. 5,796,183 (’183 pa-
tent), which is directed to “a capacitive responsive elec-
tronic switching circuit.” ’183 patent, col. 1, ll. 7–8. In
general terms, 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 filed a petition for IPR with respect to claims
37–41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96,
97, 99, 101, and 102 of the ’183 patent. Claim 40, repre-
sentative for the issues on appeal, recites:
    40. A capacitive responsive electronic switching cir-
    cuit comprising:
    an oscillator providing a periodic output signal
    having a predefined frequency;
    a microcontroller using the periodic output signal
    from the oscillator, the microcontroller selectively
    providing signal output frequencies to a plurality
    of small sized input touch terminals of a keypad,
    wherein the selectively providing comprises the mi-
    crocontroller selectively providing a signal output
    frequency to each row of the plurality of small sized
    input touch terminals of the keypad;
SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC                  3



    the plurality of small sized input touch terminals
    defining adjacent areas on a dielectric substrate for
    an operator to provide inputs 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 input touch terminals,
    said detector circuit being responsive to signals
    from said oscillator via said microcontroller and a
    presence of an operator’s body capacitance to
    ground coupled to said touch terminals when prox-
    imal or touched by the operator to provide a control
    output signal,
    wherein said predefined frequency of said oscillator
    and said signal output frequencies are selected to
    decrease a first impedance of said dielectric sub-
    strate relative to a second impedance of any con-
    taminate that may create an electrical path on said
    dielectric substrate between said adjacent areas
    defined by the plurality of small sized input touch
    terminals, and wherein said detector circuit com-
    pares a sensed body capacitance change to ground
    proximate an input touch terminal to a threshold
    level to prevent inadvertent generation of the con-
    trol output signal.
J.A. 69, col. 1, ll. 23–56 (emphasis added).
    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 (Ger-
pheide), 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 “provid-
ing 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.
4                 SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC




    The Board instituted IPR on all of the challenged
claims except for claims 37, 38, and 39. In its final written
decision, the Board concluded that Samsung had failed to
show that the claims were unpatentable as obvious by a
preponderance of the evidence on two grounds: The Board
held that Samsung had failed to show (1) a motivation to
combine Gerpheide with Ingraham/Caldwell and (2) a rea-
sonable expectation of success in achieving the claimed
limitation of “providing signal frequencies.”
   Samsung appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
                         DISCUSSION
    The ultimate determination of whether a patent claim
would have been obvious is a question of law that we review
de novo. Underlying factual findings are reviewed for sub-
stantial evidence.
                  I. Motivation to Combine
    The Board concluded that Samsung failed to show that
there would have been a motivation to combine Gerpheide
with Ingraham/Caldwell. The Board concluded that Ingra-
ham disclosed a keyboard responsive to capacitance
changes caused by a user’s touch and Caldwell disclosed a
touch pad system that senses user touch by providing a sig-
nal frequency to a row of keys and monitoring output via
sensor electrodes. Samsung alleged that the combination of
Ingraham and Caldwell disclosed all of the claim limita-
tions, except for “providing signal output frequencies,” be-
cause together they disclosed a capacitive touch responsive
device with a multi input keypad that would provide a sin-
gle signal output frequency to the touchpad. Gerpheide was
alleged to have taught “providing signal output frequen-
cies” based on its teachings of testing electrical interference
at different frequencies and then using the frequency with
the lowest measured interference.
SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC                  5



     The Board found that Gerpheide taught reducing elec-
trical interference in single point capacitive touchpads. The
concern identified in Gerpheide was that “a capacitance-
based detection device may suffer from electrical back-
ground interference . . . [which] interferes with position de-
tection. These spurious signals cause troublesome
interference with the detection of finger positioning.” Ger-
pheide, col. 2, ll. 37–42. Gerpheide’s solution was to sequen-
tially send different frequencies to the touchpad and
measure electrical interference. The frequency with the
lowest measured electrical interference was then selected,
which had the effect of mitigating the interference without
expensive nulling equipment.
    The Board found that 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. Surface contamination (e.g., water) on such
a device can cause unintended actuation. The Board found
that Gerpheide was not directed to this problem because
Gerpheide disclosed only a single input touchpad, which
would not suffer from unintended actuation of proximal
keys, unlike the multi input touchpad discussed in Ingra-
ham, Caldwell, and the ’183 patent.
    The Board concluded that because Gerpheide’s teach-
ings were made in the context of a single point input capac-
itive touch device, 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 Board rea-
soned that “[t]he considerations described in the ’183 pa-
tent, Ingraham I, and Caldwell related to the close
proximity of touch circuits in a keypad are wholly absent
from Gerpheide.” J.A. 19. The Board also noted that the
teachings of a different reference, U.S. Patent No.
4,639,720 (Rympalski), reinforced its conclusion that there
was a difference between single and multi point touch ca-
pacitive responsive systems. The Board noted that
6                 SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC




Rympalski taught that single point touch pads “suffer from
a lack of versatility (they are capable of locating only one
coordinate point at a time) and consume considerable
power and involve complex hardware, thereby reducing
their cost effectiveness and practical utility.” J.A. 17.
    In support of the Board’s decision, UUSI first argues
that Gerpheide was non-analogous art because it was di-
rected to a single point capacitive touch pad, in contrast to
the multi point capacitive touch pads disclosed in Ingra-
ham, Caldwell, and the ’183 patent. The Board made no
finding that Gerpheide was not analogous art, and there is
no support for UUSI’s argument on appeal that it is not
analogous. Gerpheide, Ingraham, Caldwell, and the ’183
patent claims are all generally directed to capacitive touch
devices, even if they are to different permutations of such
devices (i.e., single versus multi point touch input). Ger-
pheide is analogous art as it is directed to the same field of
endeavor (i.e., capacitive touch device design) as the ’183
patent. See Unwired Planet, LLC v. Google Inc., 841 F.3d
995, 1000–01 (Fed. Cir. 2016).
     UUSI next argues that the Board was correct in finding
that Gerpheide was addressed to a different problem, re-
ferring us to its expert’s testimony regarding the fact that
Gerpheide and the ’183 patent were directed to different
problems and solved those problems in different ways.
Samsung argues that under KSR International Co. v. Tele-
flex Inc., 550 U.S. 398 (2007), the Board’s decision was le-
gally erroneous because it required the proffered
motivation to combine Gerpheide with Ingraham/Caldwell
to be the same as the one that animated the patentee in
arriving at the claimed invention. We agree with Samsung.
The Board’s categorical rejection of the teachings from a
single input device to those of a multi input device is not
supportable. “[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would rec-
ognize that it would improve similar devices in the same
SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC                7



way, using the technique is obvious unless its actual appli-
cation is beyond his or her skill.” Id. at 417.
    Samsung presented uncontested evidence that the
combination of Ingraham and Caldwell would experience
electrical interference, and Gerpheide taught a way to ad-
dress 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. 1 Ger-
pheide recognized this as a problem and provided a solu-
tion to reduce such interference. Thus, a person of skill in
the art would have been motivated to include such a fea-
ture from analogous prior art in a multi input capacitive
touch pad device (i.e., the device of the Ingraham/Caldwell
combination). The Board’s contrary conclusion is not sup-
portable.
          II. Reasonable Expectation of Success
    The Board also found that Samsung had failed to show
there was a reasonable expectation of success in combining
Gerpheide with Ingraham/Caldwell.
    In order to establish a reasonable expectation of suc-
cess, the challenger must show “a reasonable expectation
of achieving what is claimed in the patent-at-issue.” Intel-
ligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1367 (Fed. Cir. 2016) (emphasis added). Reasonable
expectation of success constitutes a question of law where,
as here, it rests on claim construction and there is no ex-
trinsic evidence offered in connection with claim


   1    Rympalski’s criticism of certain issues with single
input touch devices does not suggest that multi input
touchpads, such as Ingraham/Caldwell, would not benefit
from features of Gerpheide.
8                 SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC




construction. See Allergan, Inc. v. Apotex Inc., 754 F.3d
952, 966 (Fed. Cir. 2014). For an expired patent, such as
the ’183 patent, the claims are construed using the stand-
ard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc).
    The basis of the Board’s decision as to reasonable ex-
pectation of success is not clear, but it appears to rest on
an implicit claim construction of the limitation “the micro-
controller selectively providing signal output frequencies to
a plurality of small sized input touch terminals of a keypad,
wherein the selectively providing comprises the microcon-
troller selectively providing a signal output frequency to
each row of the plurality of small sized input touch termi-
nals of the keypad.” J.A. 69, col. 1, ll. 28–34. UUSI argues
that the Board properly concluded that the claims require
that the microcontroller provide different frequencies to
different rows of touch pads, and that in the proposed com-
bination of Gerpheide with Ingraham/Caldwell, “it would
not be possible to sequence through each touch pad . . . us-
ing multiple frequencies to differentiate between neighbor-
ing touch pads as disclosed in the ’183 Patent.” UUSI
Response Br. at 44 (internal quotation marks omitted).
    We conclude that the Board’s implicit claim construc-
tion was erroneous. This is not a question of which expert
to credit, contrary to the Board’s approach, but rather a le-
gal determination regarding claim construction. 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 touch-
pad. The discussion in the specification to which UUSI di-
rects our attention only addresses using higher frequencies
to avoid unintended actuation of proximal keys, not
whether different frequencies are separately provided to
each row “to differentiate between neighboring touch
pads.” UUSI Response Br. 44. Dependent claim 45, which
Samsung also challenges, requires “[t]he capacitive respon-
sive electronic switching circuit as defined in claim 40,
SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC                  9



wherein each signal output frequency selectively provided
to each row of the plurality of small sized input touch ter-
minals of the keypad has a same [frequency] value.”
J.A. 69, col. 2, ll. 4–7 (emphasis added). Given that the de-
pendent claim recites sending the same frequency to all of
the rows of the device, we interpret the necessarily broader
independent claim 40 as also covering such a situation
(even though it may also cover a situation where different
frequencies are provided to different rows). In other words,
the claims are not limited to situations in which different
frequencies are provided to different rows. A reasonable ex-
pectation of success thus only requires that different fre-
quencies be provided to the entire pad. 2
     Based on the proper claim construction, we vacate and
remand for the Board to consider whether Samsung has
shown that there would have been a reasonable expecta-
tion of success in combining the teaching of Gerpheide with
the teachings of Ingraham/Caldwell to arrive at the
claimed invention. The question is whether there would
have been a reasonable expectation of success in modifying
the Ingraham/Caldwell combination to “provide frequen-
cies” 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” a



    2    On appeal, UUSI argues that there are other limi-
tations required by the claims that are not taught by Sam-
sung’s proposed combination, including the use of front-end
testing for selection of the frequencies and the use of higher
frequencies. The claims do not impose such requirements.
The claim language does not support a requirement of
front-end testing, and independent claim 40 does not limit
the range of claimed “frequencies” to only higher value
ones. Indeed, other dependent claims recite numerical fre-
quency values, which indicates that independent claim 40
is not so limited.
10                 SAMSUNG ELECTRONICS CO., LTD. v. UUSI, LLC




frequency, selected from multiple possible frequencies, to
the entire touch pad).
                    III. Additional Claims
    Samsung argues that the proceeding must be re-
manded back to the Board to consider the patentability of
challenged claims 37, 38, and 39, on which the Board de-
clined to institute IPR. SAS Inst. Inc. v. Iancu, 138 S. Ct.
1348, 1359–60 (2018). UUSI argues that Samsung has
waived this argument by failing to present it to the Board.
We conclude that Samsung did not waive its SAS argument
as Samsung timely raised the issue in its opening brief filed
less than a month after SAS was decided, see BioDelivery
Sci. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d
1205, 1209 (Fed. Cir. 2018), and in light of the disposition
of the above issues UUSI has not shown that the Board’s
error in instituting IPR on less than all challenged claims
was harmless, see PGS Geophysical AS v. Iancu, 891 F.3d
1354, 1362 (Fed. Cir. 2018). We remand with instructions
for the Board to also consider the patentability of claims
37, 38, and 39.
                        CONCLUSION
    We conclude that Samsung has established a motiva-
tion to combine Gerpheide with Ingraham/Caldwell. We
vacate the Board’s decision and remand for further pro-
ceedings consistent with this opinion.
                 VACATED AND REMANDED
                           COSTS
     No costs.
