Case: 18-1456 Document: 90 Page: 1 Filed: 09/25/2020
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
VOIP-PAL.COM, INC.,
Appellee
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2018-1456, 2018-1457
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
01198, IPR2016-01201.
______________________
Decided: September 25, 2020
______________________
MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
Washington, DC, argued for appellant. Also represented
by BRIAN BUROKER, ANDREW WILHELM; RYAN IWAHASHI,
Palo Alto, CA; PAUL R. HART, Erise IP, P.A., Greenwood
Village, CO; ERIC ALLAN BURESH, ADAM PRESCOTT SEITZ,
Overland Park, KS.
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2 APPLE INC. v. VOIP-PAL.COM, INC.
LEWIS EMERY HUDNELL, III, Hudnell Law Group PC,
Mountain View, CA, argued for appellee.
DENNIS FAN, Appellate Staff, Civil Division, United
States Department of Justice, Washington, DC, argued for
intervenor. Also represented by MELISSA N. PATTERSON,
ETHAN P. DAVIS; THOMAS W. KRAUSE, FARHEENA YASMEEN
RASHEED, DANIEL KAZHDAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA.
______________________
Before PROST, Chief Judge, REYNA and HUGHES, Circuit
Judges.
REYNA, Circuit Judge.
In two consolidated appeals, Apple Inc. challenges the
final written decisions of the Patent Trial and Appeal
Board that certain claims of Voip-Pal.com, Inc.’s patents
were not invalid for obviousness. Apple also challenges the
Board’s sanctions determinations. We find no error in the
Board’s non-obviousness determinations or in its sanctions
rulings. We vacate and remand the Board’s final written
decisions as to nineteen claims on mootness grounds. We
affirm as to the remaining claims.
BACKGROUND
I
Appellee Voip-Pal.com, Inc. (“Voip-Pal”) owns U.S. Pa-
tent Nos. 8,542,815 (“the ’815 patent”) and 9,179,005 (“the
’005 patent”) (collectively, the “Asserted Patents”), both of
which are titled “Producing Routing Messages for Voice
Over IP Communications.” The Asserted Patents describe
the field of invention as “voice over IP communications and
methods and apparatus for routing and billing” and relate
to routing communications between two different types of
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APPLE INC. v. VOIP-PAL.COM, INC. 3
networks—public and private. See ’815 patent at 1:12–13,
1:15–21.
In February 2016, Voip-Pal sued appellant Apple Inc.
(“Apple”) for infringement of the Asserted Patents in the
United States District Court for the District of Nevada.
Voip-Pal.com, Inc. v. Apple Inc., No. 2:16-cv-260 (D. Nev.
Feb. 9, 2016). In June 2016, Apple petitioned for inter
partes review (“IPR”) of several claims of the Asserted Pa-
tents in two separate proceedings before the Patent Trial
and Appeal Board (“Board”)—IPR2016-01198 and
IPR2016-01201. The Nevada district court stayed Voip-
Pal’s infringement action pending the IPRs.
In its IPR petitions, Apple argued that the claims were
obvious over the combination of U.S. Patent No. 7,486,684
B2 (“Chu ’684”) and U.S. Patent No. 8,036,366 (“Chu ’366”).
Apple relied on Chu ’684 as a primary reference for its in-
frastructure, call classifying, and call routing disclosures.
Apple relied on Chu ’366 as a secondary reference for its
caller profile and dialed digit reformatting disclosures.
A panel of the Board (Benoit, Pettigrew, Margolies, JJ.)
(“Original Panel”) instituted review in both proceedings.
In June 2017, the Original Panel was replaced by a second
panel (Cocks, Chagnon, Hudalla, JJ.) (“Interim Panel”) for
reasons not memorialized in the record.
During both IPR proceedings, Voip-Pal’s former Chief
Executive Officer, Dr. Thomas E. Sawyer, sent six letters
to various parties, copying members of Congress, the Pres-
ident, federal judges, and administrative patent judges at
the Board. Dr. Sawyer did not copy or send Apple the let-
ters. The letters criticized the IPR system, complained
about cancellation rates at the Board, and requested judg-
ment in favor of Voip-Pal or dismissal of Apple’s petition in
the ongoing Apple IPR proceedings. The letters did not dis-
cuss the underlying merits of Apple’s IPR petitions.
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4 APPLE INC. v. VOIP-PAL.COM, INC.
On November 20, 2017, the Interim Panel issued final
written decisions in both actions, determining all claims to
be not invalid as obvious over Chu ’684 and Chu ’366. In
its final written decisions, the Interim Panel found that Ap-
ple did not provide evidentiary support for Apple’s argu-
ment on motivation to combine. Additionally, the Interim
Panel credited Voip-Pal’s expert’s testimony that Chu ’684
did not have, as Apple argued, a dialing deficiency.
II
Apple then moved for sanctions against Voip-Pal based
on Sawyer’s ex parte communications with the Board and
with the United States Patent and Trademark Office. Ap-
ple argued that Voip-Pal’s ex parte communications vio-
lated its due process rights and the Administrative
Procedures Act. Apple requested that the Board sanction
Voip-Pal by entering adverse judgment against Voip-Pal
or, alternatively, by vacating the final written decisions
and assigning a new panel to preside over “constitutionally
correct” new proceedings going forward.
After moving for sanctions, Apple appealed the Board’s
final written decision to this court, giving rise to the instant
consolidated appeals. Upon Apple’s motion, we stayed the
appeals and remanded the cases for the limited purpose of
allowing the Board to consider Apple’s sanctions motions.
Apple Inc. v. Voip-Pal.com, Inc., Nos. 18-1456, -1457 (Fed.
Cir. Feb. 21, 2018). For the sanctions proceedings, a new
panel (Boalick, Bonilla, Tierney, JJ.) (“Final Panel”) re-
placed the Interim Panel.
The Final Panel determined that Voip-Pal engaged in
sanctionable ex parte communications. The Final Panel
rejected Apple’s request for a directed judgment and Ap-
ple’s alternative request for new proceedings before a new
panel. The Final Panel fashioned its own sanction, which
provided that the Final Panel would preside over Apple’s
petition for rehearing, which, according to the Final Panel,
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APPLE INC. v. VOIP-PAL.COM, INC. 5
“achieves the most appropriate balance when considering
both parties’ conduct as a whole.” J.A. 71.
The parties proceeded to panel rehearing briefing. The
Final Panel denied Apple’s petition for rehearing because
Apple had “not met its burden to show that in the Final
Written Decision, the [Interim] panel misapprehended or
overlooked any matter,” J.A. 86, and “[e]ven if [the Panel]
were to accept [Apple’s] view of Chu ’684 . . . [the Panel]
would not reach a different conclusion.” J.A. 82. Apple
then moved our court to lift the limited stay. We lifted the
stay and proceeded to briefing and oral argument. Apple
Inc. v. Voip-Pal.com, Inc., Nos. 18-1456, -1457 (Fed. Cir.
July 3, 2019). We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
I
Before turning to the merits of these appeals, we ad-
dress a threshold jurisdictional issue Apple raised post-
briefing. On June 8, 2020, prior to oral argument, Apple
filed a post-briefing document in both appeals entitled
“Suggestion of Mootness.” Apple Inc. v. Voip-Pal.com, Inc.,
Nos. 18-1456 (Fed. Cir. June 8, 2020), ECF No. 79. In that
submission, Apple contends that our recent ineligibility de-
termination in Voip-Pal.com, Inc. v. Twitter, Inc., 798
F. App’x 644 (Fed. Cir. 2020) (“Twitter”), renders the in-
stant appeals moot and that we must vacate the Board’s
underlying final written decisions and sanctions orders.
For the reasons discussed below, we agree in part with Ap-
ple.
A. Twitter
Shortly after the Interim Panel issued its final written
decisions in December 2017, the parties agreed to lift the
stay in the underlying district court litigation. See Voip-
Pal.com, Inc. v. Apple Inc., No. 2:16-cv-260, ECF No. 37
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6 APPLE INC. v. VOIP-PAL.COM, INC.
(D. Nev. Jan. 26, 2018). In October 2018, the Nevada dis-
trict court litigation was transferred to the Northern Dis-
trict of California, along with three other related cases in
which Voip-Pal had filed similar complaints alleging in-
fringement of the same patents. See Voip-Pal.com, Inc. v.
Apple Inc., 375 F. Supp. 3d 1110, 1117 (N.D. Cal. 2019).
The California district court required Voip-Pal to nar-
row the number of asserted claims against all parties in all
cases to the same maximum twenty claims. In March 2019,
the district court identified two representative claims
(claim 1 of the ’815 patent and claim 74 of the ’005 patent). 1
Apple and other defendants filed a consolidated motion to
dismiss, arguing that the twenty asserted claims were in-
eligible under 35 U.S.C. § 101. The district court granted
the motion to dismiss, determining that the representative
claims were patent ineligible. In March 2020, we affirmed
the district court’s judgment that the asserted claims were
patent ineligible. Twitter, 798 F. App’x at 645. We denied
Voip-Pal’s rehearing request in Twitter.
B. Overlapping Claims
At oral argument, Apple argued, and Voip-Pal did not
dispute, that these appeals are moot as to Claims 1, 7, 27,
28, 72, 73, 92, and 111 of the ’815 patent and Claims 49,
73, 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 patent
(collectively, the “overlapping claims”). 2 These nineteen
overlapping claims were at issue in the underlying IPR pro-
ceedings and were also deemed patent ineligible in Twitter.
1 In the Apple IPR proceedings, the representative
claims were claim 1 of the ’815 and claim 1 of the ’005 pa-
tent.
2 See Oral Arg. at 18:06–10, 18:28–35, 19:23–47, No.
2018-1456, http://www.cafc.uscourts.gov/oral-argument-
recordings.
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APPLE INC. v. VOIP-PAL.COM, INC. 7
We agree that these overlapping claims are rendered moot
in these appeals in light of Twitter.
Because we have determined that the overlapping
claims failed the Section 101 threshold in Twitter, Apple
“no longer has the potential for injury, thereby mooting the
[obviousness] inquiry” at issue in the instant appeals. Mo-
menta Pharm., Inc. v. Bristol-Myers Squibb Co., 915 F.3d
764, 770 (Fed. Cir. 2019) (“[W]hen the potential for injury
has been mooted by events, the federal courts are deprived
of jurisdiction.”). Thus, we vacate-in-part the Board’s final
written decisions only as to these overlapping claims and
direct the Board to dismiss Apple’s petitions as to these
claims. See, e.g., United States v. Munsingwear, Inc., 340
U.S. 36, 39–41 (1950) (noting that the “established practice
. . . in dealing with a civil case from a court in the federal
system which has become moot while [on appeal] is to re-
verse or vacate the judgment below and remand with a di-
rection to dismiss” (emphasis added)). 3
C. Nonoverlapping Claims
We now turn to whether these appeals are moot as to
the “nonoverlapping claims.” The nonoverlapping claims
are the fifteen remaining claims at issue in the underlying
IPR proceedings and were not part of the ineligibility
3 We recognize that these appeals did not arise from
a civil case in a federal court but rather from proceedings
before an administrative agency. This difference in proce-
dural history does not merit a different remedy. See, e.g.,
PNC Bank Nat’l Ass’n v. Secure Axcess, LLC, 138 S. Ct.
1982 (2018) (mem.) (ordering remand for Board to vacate
order for mootness).
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8 APPLE INC. v. VOIP-PAL.COM, INC.
determination in Twitter. 4 Apple argues that the question
of obviousness as to the nonoverlapping claims “appears to
be moot” in light of Twitter because Apple faces no liability
for infringing these claims. Suggestion of Mootness at 11
(emphasis added). Apple argues that “[b]asic principles of
claim preclusion (res judicata) preclude Voip-Pal from ac-
cusing Apple” of infringing the nonoverlapping claims in
future litigation, and thus, Apple can never face infringe-
ment liability as to these claims. Id. According to Apple,
Voip-Pal is precluded from asserting these fifteen nonover-
lapping claims against Apple because they are “essentially
the same” as the claims held patent ineligible in the Twit-
ter appeal. Id. Apple also argues that Voip-Pal effectively
conceded in the underlying district court litigation that the
overlapping claims are essentially the same as the
nonoverlapping claims when Voip-Pal dropped the latter
claims from the litigation (at the request of the district
court). We disagree with Apple’s assertion of claim preclu-
sion.
Under the doctrine of claim preclusion, “a judgment on
the merits in a prior suit involving the same parties or their
privies bars a second suit based on the same cause of ac-
tion.” Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 326
(1955) (internal quotation marks omitted). The determina-
tion of the “precise effect of the judgment[] in th[e] [first]
case will necessarily have to be decided in any such later
actions that may be brought.” In re Katz Interactive Call
Processing Pat. Litig., 639 F.3d 1303, 1310 n.5 (Fed. Cir.
2011) (emphasis added). Apple acknowledges that any res
judicata effect of a first proceeding is “an issue that only a
future court can resolve.” Appellant’s Br. at 35 (citing
4 The fifteen nonoverlapping claims are claims 34,
54, 74, and 93 of the ’815 patent and claims 1, 24–26, 50,
76, 79, 88, 89, 95, and 98 of the ’005 patent.
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APPLE INC. v. VOIP-PAL.COM, INC. 9
Matsushita Elec. Indus. Co. v. Epstein, 516 U.S. 367, 396
(1996) (Ginsburg, J., concurring in part and dissenting in
part) (“A court conducting an action cannot predetermine
the res judicata effect of the judgment; that effect can be
tested only in a subsequent action.”) (emphasis added)).
Thus, any preclusive effects that Twitter could have
against the same or other parties must be decided in any
subsequent action brought by Voip-Pal. Until then, any de-
termination we make as to whether Voip-Pal is claim pre-
cluded from filing an infringement action concerning the
nonoverlapping claims—claims that no court has deter-
mined are patent ineligible—is advisory in nature and falls
outside of our Article III jurisdiction. See Flast v. Cohen,
392 U.S. 83, 96 (1968) (“[I]t is quite clear that the oldest
and most consistent thread in the federal law of justiciabil-
ity is that the federal courts will not give advisory opin-
ions.”) (internal quotation marks omitted). The question of
obviousness as to the nonoverlapping claims is thus not
moot. On these grounds, we deny Apple’s request that we
vacate the Board’s sanctions order as moot. We maintain
jurisdiction over both appeals as to the nonoverlapping
claims and now turn to the merits of the appeals.
II
Apple challenges the Board’s sanctions order and de-
nial of rehearing on two grounds. First, Apple argues that
the Board violated the Administrative Procedures Act
(“APA”) and its due process rights when the Board imposed
non-enumerated sanctions for Voip-Pal’s ex parte commu-
nications. Second, Apple argues that the Board wrongly
concluded that the challenged claims are not invalid for ob-
viousness.
We review the Board’s sanction decisions for an abuse
of discretion. See Bennett Regulator Guards, Inc. v. Atlanta
Gas Light Co., No. 2017-1555, 2020 WL 4743511, at *8
(Fed. Cir. 2020). The Board abuses its discretion if the
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10 APPLE INC. v. VOIP-PAL.COM, INC.
sanction “(1) is clearly unreasonable, arbitrary, or fanciful;
(2) is based on an erroneous conclusion of law; (3) rests on
clearly erroneous fact findings; or (4) involves a record that
contains no evidence on which the Board could rationally
base its decision.” Abrutyn v. Giovanniello, 15 F.3d 1048,
1050–51 (Fed. Cir. 1994). This court “review[s] contentions
that rights of due process have been violated de novo.” Ad-
ams v. Dep’t of Just., 251 F.3d 170 (Fed. Cir. 2000).
We review the Board’s ultimate determination of non-
obviousness de novo and its underlying factual findings for
substantial evidence. WesternGeco LLC v. ION Geophysi-
cal Corp., 889 F.3d 1308, 1326 (Fed. Cir. 2018).
A. APA
Apple argues that the Board violated the APA when
the Board exceeded its authority under its own sanction
regulations. According to Apple, upon determining that
Voip-Pal’s ex parte communications were sanctionable, the
Board was required to issue one of eight authorized sanc-
tions under 37 C.F.R. § 42.12(b). Apple noted that the
Board issued a sanction not explicitly provided by Section
42.12(b). Thus, Apple argues, the Board exceeded its au-
thority. We reject this argument.
The provision at issue provides that:
(a) The Board may impose a sanction against a
party for misconduct, . . . .
(b) Sanctions include entry of one or more of the
following:
(1) An order holding facts to have been es-
tablished in the proceeding;
(2) An order expunging or precluding a
party from filing a paper;
(3) An order precluding a party from pre-
senting or contesting a particular issue;
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APPLE INC. v. VOIP-PAL.COM, INC. 11
(4) An order precluding a party from re-
questing, obtaining, or opposing discovery;
(5) An order excluding evidence;
(6) An order providing for compensatory ex-
penses, including attorney fees;
(7) An order requiring terminal disclaimer
of patent term; or
(8) Judgment in the trial or dismissal of the
petition.
37 C.F.R. § 42.12 (emphasis added).
Key here, Section 42.12(b) uses the term “include,”
which signifies a non-exhaustive list of sanctions. See, e.g.,
Marrama v. Citizens Bank of Mass., 549 U.S. 365, 373 &
n.8 (2007) (determining statutory list of ten items preceded
by term “including” to be “a nonexclusive list”); Talk Am.,
Inc. v. Mich. Bell Tel. Co., 564 U.S. 50, 63 n.5 (2011) (deter-
mining regulation using phrase “include, but are not lim-
ited to,” to be “nonexhaustive”); see also Include, Black’s
Law Dictionary (11th ed. 2019) (“The participle including
typically indicates a partial list.”). Additionally, reading
this regulatory provision as non-exhaustive is consistent
with the context of the Board’s sanctioning regime, which
affords the Board discretion to impose sanctions in the first
place. See 37 C.F.R. § 42.12(a)(1) (providing that the Board
“may impose a sanction” (emphasis added)); Rules of Prac-
tice for Trials Before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board De-
cisions, 77 Fed. Reg. 48,612, 48,616 (Aug. 14, 2012) (provid-
ing that “an ex parte communication may result in
sanctions”) (second emphasis added). The use of “may” em-
phasized above renders permissible and non-exhaustive
use of the listed sanctions. Thus, contrary to Apple’s posi-
tion, Section 42.12(b) does not limit the Board to the eight
listed sanctions. Rather, the plain reading of Section
42.12(b) allows the Board to issue sanctions not explicitly
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12 APPLE INC. v. VOIP-PAL.COM, INC.
provided in the regulation. We therefore hold that the
plain reading of Section 42.12(b) provides the Board with
discretion to issue sanctions and that the Board did not
commit an APA violation when it issued a sanction not ex-
plicitly listed under Section 42.12.
To the extent Apple argues that the Board abused its
discretion by not ordering a sanction of judgment in Apple’s
favor, see Appellant’s Br. at 31, we reject this argument.
“[A] sanction which may sound the death knell for im-
portant [patent] rights and interests . . . should be used as
a weapon of last, rather than first, resort.” Abrutyn, 15
F.3d at 1053 (internal quotation marks and citation omit-
ted). Additionally, “discretion implies a range of permissi-
ble choices. As long as the tribunal’s choice falls within a
reasonable range, it cannot constitute an abuse of discre-
tion.” Id. Here, the Board’s decision to (a) allow Apple to
petition for rehearing before a new panel, and (b) provide
Apple with a meaningful opportunity to respond to Voip-
Pal’s letters was a reasonable course of action and one we
will not disturb.
B. Due Process
Apple also argues that the Board violated Apple’s right
to due process by refusing to order a de novo proceeding
before a new panel. We are not persuaded.
First, Apple did not identify any property interests in
the course of its due process arguments below. We con-
clude that its arguments identifying property interests for
the first time on appeal are waived. See Stone v. FDIC, 179
F.3d 1368, 1374, 1377 (Fed. Cir. 1999) (noting that there
can be no due process violation without the deprivation of
a property interest); see also Patlex Corp. v. Mossinghoff,
771 F.2d 480, 484 (Fed. Cir. 1985) (outlining factors to be
analyzed when determining a due process violation, the
first of which is “the private interest that will be affected
by the official action”) (quoting Mathews v. Eldridge, 424
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APPLE INC. v. VOIP-PAL.COM, INC. 13
U.S. 319, 335 (1976)); Cleveland Bd. of Educ. v. Loudermill,
470 U.S. 532, 542–46 (1985) (“The essential requirements
of due process . . . are notice and opportunity to respond.”).
In particular, Apple argues for the first time on appeal that
the preclusive application of collateral estoppel of a final
written decision necessarily constitutes a deprivation of
Apple’s property interests and therefore entitles Apple to
reversal here. Despite Voip-Pal’s statement in its response
to Apple’s sanctions motion that “there is no property right
at stake,” J.A. 1674, Apple did not avail itself of the oppor-
tunity to address the issue in its reply. Apple also argues
for the first time on appeal that the money it spent in re-
questing IPR was a property interest. Apple failed to raise
these arguments below, and thus it has waived these argu-
ments on appeal. See, e.g., Sage Prods., Inc. v. Devon In-
dus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997) (declining
to consider new arguments raised for the first time on ap-
peal).
We also recognize that the Board introduced Voip-Pal’s
six ex parte letters into the record and gave Apple an op-
portunity to respond to these letters during the panel re-
hearing stage before a new panel. Apple chose, however,
not to address the substance of Voip-Pal’s letters—the very
same letters that Apple claims “tainted” its IPR proceed-
ings. See Appellant’s Br. at 36. Thus, we fail to see how
the Board’s sanctions orders deprived Apple of due process.
C. Non-Obviousness
Apple also challenges the Board’s non-obviousness de-
termination. Specifically, Apple argues that the Board le-
gally and factually erred when it determined that Apple
failed to establish a motivation to combine Chu ’684 with
Chu ’366. We are not persuaded by Apple’s arguments.
Apple’s underlying premise to combine the teachings of
Chu ’684 with those of Chu ’336 was that a skilled artisan
would have viewed Chu ’684’s interface as less “intuitive”
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14 APPLE INC. v. VOIP-PAL.COM, INC.
and less “user-friendly” than that of Chu ’366, and thus a
skilled artisan would have a desire to improve Chu ’684’s
system. In particular, Apple argued that Chu ’684’s system
had a dialing deficiency that did not permit short-form
phone number dialing but rather long-form, fully format-
ted “E.164 numbers,” e.g., “+1-202-555-1234.” See Appel-
lant’s Br. at 46. The Board rejected Apple’s argument,
noting that Apple’s expert provided no “adequate support”
and no “underlying evidentiary support” for the proposition
that a skilled artisan would have regarded Chu ’684’s
teachings as deficient.
Apple argues on appeal that the Board legally erred in
rejecting its motivation-to-combine argument by improp-
erly applying the now-rejected teaching, suggestion, moti-
vation test rather than the flexible obviousness analysis
required under KSR International Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). In particular, Apple faults the Board
for rejecting its expert testimony that Chu ’684’s teachings
were deficient for failure to provide “underlying eviden-
tiary support for the proposition that [a POSITA] would
have regarded Chu ’684’s teachings as deficient.” J.A. 19.
We disagree with Apple.
The Board did not fault Apple for not citing explicit
“teachings, suggestions, or motivations to combine the
prior art.” Appellant’s Br. at 50. Rather, the Board noted
that Apple’s expert provided only “conclusory and insuffi-
cient” reasons for combining Chu ’684 with Chu ’366 and
failed to “articulate[] reasoning with some rational under-
pinning.” J.A. 21. Thus, contrary to Apple’s position, the
Board did not legally err but rather held Apple to the
proper evidentiary standard. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; in-
stead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of ob-
viousness.”).
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APPLE INC. v. VOIP-PAL.COM, INC. 15
Apple also argues that the Board factually erred by
failing to consider that Chu ’366 provides explicit evidence
of motivation to combine, “explaining that there is a desire
to enter abbreviated numbers for local and national tele-
phone calls.” Appellant’s Br. at 50. However, the Board
considered Chu ’366’s teachings and cited material parts
but rejected the premise that Chu ’684’s interface was any
less intuitive or user-friendly than Chu ’366’s. The Board
credited the unrefuted testimony of Voip-Pal’s expert, Dr.
Mangione-Smith, who explained that Chu ’684’s operation
as a public branch exchange (“PBX”) system was not “inad-
equate or unintuitive.” J.A. 968–71 (Ex. 2016 ¶¶ 65–67).
In particular, Dr. Mangione-Smith explained, “PBX’s pro-
vided all the features of ordinary phones connected to the
[public switched telephone network], and in addition, sup-
ported the dialing of private extension numbers. The use
of a prefix digit such as ‘9’ was not a deficiency but rather
a simple way of supporting both [public switched telephone
network] dialing and extension dialing.” J.A. 969–70 (Ex.
2016 ¶ 66) (emphasis in original). 5 We find no error in the
Board’s decision to credit the opinion of Voip-Pal’s expert
over Apple’s, and we do not reweigh evidence on appeal.
Impax Labs. Inc. v. Lannett Holdings Inc., 893 F.3d 1372,
1382 (Fed. Cir. 2018). Substantial evidence supports the
Board’s finding that Chu ’684 did not disclose a dialing de-
ficiency.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We vacate the Board’s deter-
minations that claims 1, 7, 27, 28, 72, 73, 92, and 111 of the
5 The Board alternatively determined that even if
there was a motivation to combine, the combination of Chu
’684 and Chu ’366 still failed to render the challenged
claims obvious. We do not address this alternative deter-
mination.
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16 APPLE INC. v. VOIP-PAL.COM, INC.
’815 patent and claims 49, 73, 74, 75, 77, 78, 83, 84, 94, 96,
and 99 of the ’005 patent are not invalid as obvious and
remand to the Board to dismiss these claims as moot. We
affirm the Board’s non-obviousness determinations as to
the remaining claims. We also affirm the Board’s sanctions
orders.
AFFIRMED IN PART, VACATED AND REMANDED
IN PART
COSTS
No costs.