NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PAVO SOLUTIONS LLC,
Appellant
v.
KINGSTON TECHNOLOGY COMPANY, INC.,
Cross-Appellant
______________________
2016-2209, 2016-2328, 2016-2391
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00149, IPR2015-00559.
______________________
Decided: November 6, 2017
______________________
MATTHEW CARMINE PHILLIPS, Laurence & Phillips IP
Law LLP, Portland, OR, argued for appellant. Also
represented by KEVIN BRENT LAURENCE, Alexandria, VA;
BENJAMIN T. WANG, Russ August & Kabat, Los Angeles,
CA.
DAVID MICHAEL HOFFMAN, Fish & Richardson, P.C.,
Austin, TX, argued for cross-appellant. Also represented
by MARIA ELENA STITELER, Minneapolis, MN; MARTHA
2 PAVO SOLS. LLC v. KINGSTON TECH. CO.
HOPKINS, CHRISTINE H. YANG, Law Offices of S. J. Chris-
tine Yang, Fountain Valley, CA.
______________________
Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
LOURIE, Circuit Judge.
Pavo Solutions LLC (“Pavo”) appeals from the final
written decisions of the U.S. Patent and Trademark Office
(“USPTO”) Patent and Trial and Appeal Board (“the
Board”) in two inter partes review (“IPR”) proceedings
concluding that claims 8, 9, 11, 12, 14, and 16–23 of its
U.S. Patent 6,926,544 (“the ’544 patent”) are unpatenta-
ble as obvious. See Kingston Tech. Co. v. CATR Co.,
IPR 2015-00149, 2016 Pat. App. LEXIS 1666, at *3
(P.T.A.B. Apr. 14, 2016) (“’149 Decision”) (evaluating
claims 8, 11, 12, 16, 18, and 20); Kingston Tech. Co. v.
CATR Co., IPR 2015-00559, 2016 WL 2641477, at *1
(P.T.A.B. May 10, 2016) (“’559 Decision”) (evaluating
claims 1, 2, 4, 5, 7, 9, 13, 14, 17, 19, and 21–24).
Kingston Technology Company (“Kingston”) cross-
appeals from the final written decision in the second IPR
proceeding concluding that claims 1, 2, 4, 5, 7, 13, and 24
of the ’544 patent are not unpatentable as obvious. ’559
Decision, 2016 WL 261477, at *21. For the reasons that
follow, we affirm in part and reverse in part.
BACKGROUND
Pavo owns the ’544 patent, which is directed to a
“flash memory apparatus” having a “rotary cover.” ’544
patent col. 2 ll. 24–28. The ’544 patent discusses that the
prior art flash memory devices having a Universal Serial
Bus (“USB”) port and a separate protective cover suffer
from certain disadvantages, such as loosening or mis-
placement of the protective cover. Id. col. 1 ll. 37–47, col.
2 ll. 11–21. The ’544 patent describes a USB memory
device having, instead, a rotating cover that is not sepa-
4 PAVO SOLS. LLC v. KINGSTON TECH. CO.
“formal [sic] integrally with the case 31” or “manufactured
in form of a separate element so that the hinge protuber-
ance 33 is assembled by means of an adhesive agent.” Id.
col. 3 ll. 20–26. The specification also describes that a “‘U’
shaped” “cover 40” has a “circular hinge hole 41 for receiv-
ing the hinge protuberance 33 formed on the flash
memory main body.” Id. col. 3 ll. 31–36. The ’544 patent
further describes that a “hooking groove” and a “hooking
threshold” can be respectively “formed on” the hinge
protuberance and the hinge hole so that the hinge protu-
berance and the hinge hole can be “hooked” and not be
“easily detached from” each other. Id. col. 3 ll. 36–43.
The patent describes that the hinge protuberance can
alternatively be “formed on the cover” and the hinge hole
can be “formed on the flash memory main body.” Id. col. 4
ll. 26–29.
Claims 1, 7, 8, and 24 are independent claims, and
claims 8 and 11 are illustrative of the claims at issue in
the main appeal. Claim 8 reads as follows:
8. A flash memory apparatus comprising:
a flash memory main body including a
case within which a memory element is
mounted, an USB (Universal Serial Bus)
terminal piece electrically connected with
the memory element and installed at a
front end of the case in a projecting man-
ner; and
a cover including a pair of parallel plate
members facing each other and spaced by
an interval corresponding to the thickness
of the case, the cover having an open front
end, a closed rear end and a pair of lateral
side openings; the parallel plate members
defining an inner space receiving the case
and being hinged to the case wherein the
USB terminal piece is positioned within
PAVO SOLS. LLC v. KINGSTON TECH. CO. 5
the inner space of the cover or exposed
outside the cover by rotating the cover and
case with respect to one another.
Id. col. 5 ll. 41–56 (emphasis added). Claim 8, along with
dependent claims 9, 10, and 16–23, require the cover be
“hinged to” the case but do not specify how the cover is so
hinged.
A subset of claims that depend from claim 8 includes
different claim language further specifying how the cover
and the case are hinged together. Claim 11 reads as
follows:
11. The apparatus according to claim 8 wherein
the cover and case are hinged by a hinge protu-
berance on at least one side of the case and at least
one hinge hole in one of the parallel plate mem-
bers that receives the hinge protuberance.
Id. col. 6 ll. 5–8 (emphasis added). Claims 12–15
depend from claim 11.
Claim 1, which is at issue in the cross-appeal, as cor-
rected by the certificate of correction, reads as follows:
1. A flash memory apparatus comprising:
a flash memory main body including a rec-
tangular shaped case within which a
memory element is mounted, a USB (Uni-
versal Serial Bus) terminal piece electri-
cally connected with the memory element
and installed at a front end of the case in a
projecting manner, and a hinge protuber-
ance formed on at least one side of the case;
and
a cover including a pair of parallel plate
members facing each other and spaced by
an interval corresponding to the thickness
of the case, the cover having an open front
6 PAVO SOLS. LLC v. KINGSTON TECH. CO.
end and a closed rear end with a pair of
lateral side openings; the parallel plate
members having at least one hinge hole
receiving the hinge protuberance on the
case for pivoting the case with respect to
the flash memory main body, whereby the
USB terminal piece is received in an inner
space of the cover or exposed outside the
cover.
Id. col. 4 ll. 42–59 (emphasis added). Independent claims
7 and 24, also at issue in the cross-appeal, include similar
language, i.e., “hinge element formed on at least one side
of the case.” Id. col. 5 ll. 28–29, col. 6 ll. 52–53 (emphasis
added).
Kingston filed two petitions for IPR of the ’544 patent,
challenging its claims based on the following obviousness
grounds: (1) claims 1–3, 7–12, and 14–24 over U.S. Patent
6,480,390 (“Matsumiya”) and U.S. Patent 6,829,672
(“Deng”); (2) claims 4–6 and 13 over Matsumiya, Deng,
and U.S. Patent 6,019,238 (“Kindig”); (3) claims 1, 2, 4–9,
11–14, and 16–24 over U.S. Patent 6,522,534 (“Wu”) and
either U.S. Design Patent D199,589 (“Hoogesteger”) or
U.S. Patent 4,854,045 (“Schaub”); and (4) claims 3, 6, 10,
and 15 over Wu, either Hoogesteger or Schaub, and U.S.
Patent 3,407,636 (“Kovacevic”). J.A. 127 (’149 petition);
J.A. 2184 (’559 petition).
The Board instituted review of claims 1, 2, 7–9, 11, 12,
14, and 16–24 over Matsumiya and Deng, claims 4, 5, and
13 over Matsumiya, Deng, and Kindig, and claims 1, 2, 4,
5, 7–9, 11–14, and 16–24 over Wu and Hoogesteger. ’149
Decision, 2016 Pat. App. LEXIS 1666, at *5; ’559 Decision,
2016 WL 2641477, at *2. Kingston, after its notice of
cross-appeal, no longer challenges the Board’s decision
regarding claims 4, 5, and 13 based on Kindig, which we
do not discuss further. Appellee’s Br. 7.
A brief description of these references follows:
PAVO SOLS. LLC v. KINGSTON TECH. CO. 7
Matsumiya, entitled “Card-type Peripheral Device,” is
directed to card-type devices having a housing for a circuit
board with a “connector element” and “openings for expos-
ing the contact portion.” Matsumiya col. 1 ll. 46–54.
Matsumiya discusses that its described invention allows
“shielding [of] the contacts to prevent the accumulation of
dust and dirt on the contacts when the device is not in
use.” Id. col. 1 ll. 41–45. Matsumiya discloses various
embodiments, including one that employs a “dust proof
cover 88 mounted swingably on the outside of the housing
86” as shown below:
Id. fig. 15a, col. 12 ll. 41–43.
Deng, entitled “Electronic Flash Memory External
Storage Method and Device,” is generally directed to an
external data storage device and method employing a
“plug-and-play” technology, such as the USB interface.
Deng col. 2 ll. 12–15, col. 2 l. 65–col. 3 l. 14. It is undis-
puted that Deng does not disclose a cover for the USB
terminal. ’149 Decision, 2016 Pat. App. LEXIS 1666, at
*37 & n.8.
Wu, entitled “Pen-type Portable Memory Device,” is
directed to a portable memory device including “a cham-
ber 11,” which holds a memory unit inside, and “a cap
member 12,” which is “detachably fitted with the chamber
11” so that the “USB plug” can be “well protected from
being deformed or damaged” and “the USB plug can still
be conveniently plugged in to the computer.” Wu col. 1 ll.
41–46, 50–52, col. 2 ll. 30–34. Figure 3 of Wu, for exam-
ple, illustrates its described device:
8 PAVO SOLS. LLC v. KINGSTON TECH. CO.
Id. fig. 3.
Hoogesteger, entitled “Hand Magnifier,” is a design
patent directed to a magnifier having a swivel cover.
Hoogesteger figs. 1–4. Hoogesteger’s claimed design is
shown below:
Id. figs. 1–3.
It its final written decisions, the Board determined
that claims 8, 9, 11, 12, 14, and 16–23 are unpatentable
but that claims 1, 2, 4, 5, 7, 13, and 24 are not unpatenta-
ble. ’149 Decision, 2016 Pat. App. LEXIS 1666, at *75;
’559 Decision, 2016 WL 2641477, at *21. As relevant on
PAVO SOLS. LLC v. KINGSTON TECH. CO. 9
appeal and cross-appeal, the Board concluded that: (1)
claims 8, 9, and 16–23 (“the ‘hinged to’ claims”), which
require the cover to be “hinged to” the case, would have
been obvious; (2) claims 11, 12, and 14 (“the ‘protuberance
on’ claims”), which require a “hinge/hinged protuberance
on” the case, would also have been obvious; and (3) claims
1, 2, 7, and 24 (“the ‘protuberance formed on’ claims”),
which require a “hinge protuberance” or “hinge element”
be “formed on” the case, would not have been obvious. Id.
As relevant here, the Board construed “hinge protu-
berance,” as a “hinging structure that bulges out, pro-
trudes, or projects, beyond the surrounding surface,” ’149
Decision, 2016 Pat. App. LEXIS 1666, at *21; ’559 Deci-
sion, 2016 WL 2641477, at *4, and “hinge element” as
“encompass[ing] at least a hinge protuberance and a
hinge hole,” ’559 Decision, 2016 WL 2641477, at *6. The
Board rejected the patent owner’s contention that the
term “hinge protuberance” should be understood to “not
extend through the case like an axle would,” ’149 Deci-
sion, 2016 Pat. App. LEXIS 1666, at *17–20; instead, the
Board noted that the patent owner’s arguments regarding
particular hinge structures are better addressed by inter-
preting the terms that follow “hinge protuberance,” i.e.,
“on at least one side of the case,” id. at *20, and “formed
on at least one side of the case,” see ’559 Decision, 2016
WL 2641477, at *6–7.
The Board then drew a distinction between a hinge
protuberance “on” at least one side of the case and a
protuberance or element “formed on” at least one side of
the case. In particular, the Board determined that “on at
least one side of the case” indicates “the relative position
of the protrusion” without regard to whether or how the
hinge protuberance is attached to the case, ’149 Decision,
2016 Pat. App. LEXIS 1666, at *30, but that “formed on at
least one side of the case” indicates “integration and
attachment of the protrusion or element,” ’559 Decision,
2016 WL 2641477, at *7. The Board stated that “[t]he
10 PAVO SOLS. LLC v. KINGSTON TECH. CO.
phrase ‘formed on’ is narrower than the term ‘on’” because
of the patentee’s use of different terms in the claims and
the use of the word “formed” in describing the embodi-
ments with an attached or integrated hinge protuberance
or element. Id. at *7.
Applying its claim constructions, the Board concluded
that the “protuberance on” claims would have been obvi-
ous over both of the instituted combination grounds of
(1) Matsumiya and Deng; and (2) Wu and Hoogesteger,
but that the “protuberance formed on” claims would not
have been obvious over either of the combinations. As for
the “hinged to” claims, the Board noted that Matsumiya
and Hoogesteger disclose the cover being hinged “in some
manner” to the case, which met the claim requirement.
’149 Decision, 2016 Pat. App. LEXIS 1666, at *45.
Pavo and Kingston timely appealed and cross-
appealed, respectively. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal determinations de novo. PPC
Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
815 F.3d 747, 751 (Fed. Cir. 2016). Substantial evidence
is “such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.” In re Gart-
side, 203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)). In IPR
proceedings, the Board gives claim terms their broadest
reasonable interpretation in light of the claim and specifi-
cation. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2142–46 (2016). We review the Board’s ultimate
claim constructions de novo and underlying factual de-
terminations involving extrinsic evidence for substantial
evidence. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015) (citing Teva Pharm. U.S.A.,
Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015)).
PAVO SOLS. LLC v. KINGSTON TECH. CO. 11
Obviousness is a question of law based on underlying
factual findings relating to “the scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill in the pertinent art,
and any objective indicia of non-obviousness.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) and
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
On appeal, Pavo argues that the Board erred in adopt-
ing a construction of “on” that is broader than that of
“formed on,” and urges that the narrower construction,
requiring that the protuberance be attached to or inte-
grated into the side of the case, should be adopted for both
terms. Pavo further argues that the challenged claims
are not unpatentable as obvious even under the Board’s
claim construction because a person of ordinary skill in
the art would not have been motivated to combine or
modify the prior art references. On cross-appeal, King-
ston argues the opposite: that the Board erred in adopting
a narrower construction of “formed on” than “on,” that the
broader construction, i.e., that the protuberance need not
be attached to or integrated into the side of the case,
should be adopted for both terms, and that the challenged
claims are unpatentable even under the Board’s claim
construction. We discuss claim construction and obvious-
ness in turn.
I. Claim Construction
The claim construction arguments in this appeal and
cross-appeal both concern two closely related terms, “on”
and “formed on,” which we discuss together. Pavo and
Kingston seem to agree that “hinge protuberance on at
least one side of the case” and “hinge protuberance formed
on at least on side of the case” should be construed in the
same way. Appellant’s Br. 41–42; Appellee’s Br. 27–28.
However, their arguments differ with respect to how both
of those terms should be interpreted.
12 PAVO SOLS. LLC v. KINGSTON TECH. CO.
Pavo argues that both “on” and “formed on” require
attachment or integration of the protuberance to the case.
Pavo faults the Board for engaging in a “hyper-linguistic
analysis,” Appellant’s Br. 33, and failing to read the ’544
patent from a skilled artisan’s perspective. When read
properly, Pavo contends, the ’544 patent uses “on” as a
“shorter equivalent to ‘formed on,’” Appellant’s Br. 41, and
both should be interpreted to mean attachment to or
integration into the side of the case, and not be read to
include axle-based hinge designs.
As for the “hinged to” claims, Pavo does not argue
that the Board erred in its claim construction but con-
tends that it erred in concluding that the claims are
unpatentable as obvious for other reasons, which we
discuss below. See Oral Argument at 6:51–7:50, Pavo
Sols. LLC v. Kingston Tech. Co., Nos. 16-2209, -2328, -
2391 (Fed. Cir. Oct. 3, 2017), http://oralarguments.
cafc.uscourts.gov/default.aspx?fl=2016-2209.mp3.
Kingston responds that both “on” and “formed on”
merely denote the location of the hinge protuberance as
being on the side of the case. Giving the terms their
broadest reasonable interpretation as required in IPR
proceedings, Kingston contends that neither “on” nor
“formed on” requires attachment to or integration into the
case or excludes axle-based hinge designs.
As an initial matter, we agree with both parties that
the Board erred in distinguishing between “on” and
“formed on” in the context of the ’544 patent. As to how
they both should be interpreted, we agree with Pavo that
“hinge protuberance on at least one side of the case” and
“hinge protuberance formed on at least one side of the
case” both denote that the hinge protuberance is attached
to or integrated into the side of the case.
The Board here erred by parsing the claim language
to solely focus on “on” versus “formed on” without regard
to the surrounding language in the claims and the written
PAVO SOLS. LLC v. KINGSTON TECH. CO. 13
description of the invention. As a result, the Board
reached an unreasonably broad reading of the expression
“hinge protuberance on at least one side of the case” to
infer a scope distinguishable from that of “hinge protu-
berance formed on at least one side of the case” and
created a distinction that does not exist in the specifica-
tion, solely because the words “on” and “formed on” are
literally different.
As the Board correctly determined when construing
“hinge protuberance formed on at least one side of the
case,” the specification consistently describes that a
“hinge protuberance,” if it is on the case rather than the
cover, is attached to or integrated into the side of the case.
See, e.g., ’544 patent col. 3 ll. 20–36. Similarly, if “hinge
protuberance on at least one side of the case” is properly
construed in context, the ’544 patent reveals that it does
not distinguish “on” and “formed on” when used in the
context of the relationship between “hinge protuberance”
and the “side of the case.” It is particularly notable that
in claims 1 and 24, which read “a hinge protuberance
formed on” and “a hinge element formed on,” respectively,
later refer to the same hinge protuberance or hinge ele-
ment as the one being “on” the case. ’544 patent col. 4 ll.
47–48, 55, col. 6 ll. 52–53, 59. In other words, in the ’544
patent, “on” and “formed on” are used interchangeably in
referring to “hinge protuberance” and “hinge element” and
how they physically relate to the case. The literal differ-
ence in the claim terms, in the context of its surrounding
language and the specification, does not give rise to the
substantive distinction the Board found.
We therefore conclude that the claim terms “hinge
protuberance on at least one side of the case” and “hinge
protuberance formed on at least one side of the case” in
the context of the ’544 patent both indicate that the hinge
protuberance is attached to or integrated into the side of
the case.
14 PAVO SOLS. LLC v. KINGSTON TECH. CO.
II. Obviousness
Pavo argues that neither Matsumiya nor Hoogesteger
teaches the claimed hinge design having the protuberance
attached to or integrated into the case. Furthermore,
Pavo argues that, to the extent that its claim construction
argument were to be unsuccessful or inapplicable to the
“hinged to” claims, there was no motivation to combine or
modify the cited references because they tout the benefits
of complete dust-proof coverage of USB terminals, unlike
the flash drive covers in the ’544 patent, and that the
Board failed to properly consider its expert testimony to
this effect.
Kingston responds that even if both “on” and “formed
on” are construed to require attachment or integration of
the hinge protuberance to the side of the case, a person of
ordinary skill in the art would have modified Matsumiya
to implement what was known in the art as a “snap-on
hinge.” Appellee’s Br. 33–34. Kingston does not make a
similar argument with respect to the Hoogesteger refer-
ence.
First, as for the “hinged to” claims at issue on appeal,
Pavo does not argue that the Board erred in its claim
construction, and its nonobviousness argument solely
depends on the alleged lack of motivation to combine or
modify the references to implement a less than complete
cover for a USB terminal. However, contrary to Pavo’s
contention, the Board did consider the lack of motivation
argument, and properly reasoned that a less than optimal
result from a combination or modification does not neces-
sarily defeat a finding of such motivation. ’149 Decision,
2016 Pat. App. LEXIS 1666, at *52–56. We find no error
in the Board’s analysis and conclude that claims 8, 9, and
16–23 at issue on appeal are unpatentable as obvious over
Matsumiya in view of Deng.
Applying the correct construction of “hinge protuber-
ance on at least one side of the case,” we also conclude
PAVO SOLS. LLC v. KINGSTON TECH. CO. 15
that the “protuberance on” claims, i.e., claims 11, 12, and
14, are not unpatentable as obvious over the cited refer-
ence because, as the Board found, neither Matsumiya nor
Hoogesteger teaches the hinge protuberance attached to
or integrated into the side of the case. See ’559 Decision,
2016 WL 2641477, at *9–10, *18. Although we have
found that the Board erred in the construction of the
“protuberance on” claims, we nonetheless determine that
remand is not necessary to reapply the claims as correctly
construed because the Board’s underlying factual findings
supporting nonobviousness of the “protuberance formed
on” claims also support the conclusion of nonobviousness
of the “protuberance on” claims with equal force. We
therefore conclude that claims 11, 12, and 14 are not
unpatentable as obvious.
As for the “protuberance formed on” claims at issue on
cross-appeal, we conclude that the Board did not err in its
claim construction and obviousness conclusions. Applying
the correct claim construction, the Board determined that
the “protuberance formed on” claims are not unpatentable
as obvious because neither Matsumiya nor Hoogesteger
teaches the hinge protuberance attached to or integrated
into the side of the case. ’559 Decision, 2016 WL 2641477,
at *9–10, *18. The Board declined to consider Kingston’s
“snap-on hinge” modification argument, noting that
Kingston did not argue modification of Matsumiya in its
IPR petitions. We find no error in the Board’s analysis
and its underlying factual findings and conclude that
claims 1, 2, 4, 5, 7, and 24 at issue on cross-appeal are not
unpatentable as obvious.
In sum, claims 1, 2, 7, 11, 12, 14, and 24 are not un-
patentable as obvious over the cited references and claims
8, 9, and 16–23 are unpatentable as obvious over Matsu-
miya in view of Deng. Because we affirm the Board’s
obviousness ruling with respect to those references, we do
not address the Board’s findings with respect to
Hoogesteger and Wu. We do not disturb the Board’s
16 PAVO SOLS. LLC v. KINGSTON TECH. CO.
decision that claims 4, 5, and 13 are not unpatentable as
obvious. We have considered the remaining arguments
but find them unpersuasive.
CONCLUSION
For the foregoing reasons, the decisions of the Board
are affirmed in part and reversed in part.
AFFIRMED IN PART, REVERSED IN PART
COSTS
No costs.