Case: 20-1271 Document: 49 Page: 1 Filed: 01/27/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KEYNETIK, INC.,
Appellant
v.
SAMSUNG ELECTRONICS CO., LTD.,
Appellee
______________________
2020-1271
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00986.
______________________
Decided: January 27, 2021
______________________
MARK W. HALDERMAN, Armstrong Teasdale, LLP, Phil-
adelphia, PA, argued for appellant. Also represented by
EDWARD F. BEHM.
NAVEEN MODI, Paul Hastings LLP, Washington, DC,
argued for appellee. Also represented by CHETAN BANSAL,
STEPHEN BLAKE KINNAIRD, JOSEPH PALYS.
______________________
Before DYK, CLEVENGER, and O’MALLEY, Circuit Judges.
Case: 20-1271 Document: 49 Page: 2 Filed: 01/27/2021
2 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
Opinion for the court filed by Circuit Judge DYK.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge O’MALLEY.
DYK, Circuit Judge.
KEYnetik, Inc. (“KEYnetik”) appeals from a final deci-
sion of the Patent Trial and Appeal Board (“Board”) hold-
ing that claims 1–20 of U.S. Patent No. 8,370,106 (“the ’106
patent”) are unpatentable as obvious. We affirm the
Board’s claim construction and obviousness determination
as to claims 1–3, 5–6, 8–14, 16–17, and 19–20. We also
affirm the Board’s finding of a motivation to combine as to
dependent claims 4, 7, 15, and 18. However, we vacate the
Board’s obviousness determination as to claims 4, 7, 15,
and 18 and remand for the Board to make a determination
of reasonable expectation of success.
BACKGROUND
KEYnetik is the assignee of the ’106 patent. The ’106
patent discloses an invention that “comprises a system,
method, and article for processing motion.” ’106 patent,
col. 1 ll. 54–55. The system includes a “processor,” which
“acquire[s] movement data” from a “motion sensor,” id.
col. 1 ll. 56–61, and “detectors,” which can “detect[] motion
such as movement and rest” and “orientation towards grav-
ity from a rest position,” id. col. 1 ll. 61–67. The system
also includes an “inference state machine,” which “main-
tains a sequence of the detected motion conditions, pro-
duces a profile description for the sequence of the detected
motion, and outputs an event corresponding to the profile
description.” Id. col. 2 ll. 2–5.
An exemplary embodiment of the claimed invention,
shown in Figure 3 of the ’106 patent below, allows the user
to answer an incoming call to a handheld phone by moving
the phone through a sequence of “five states” or steps. Id.
col. 6 l. 60–col. 7 l. 1.
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
As shown in Figure 3, a user first receives “an incoming
call” (312), which is described as involving “Slow Motion”;
the user then “mov[es] the handheld [phone] from [its]
prior position” (314), described as “Fast Motion”; the user
“look[s] at the visual display of the handheld [phone]”
(316), described as involving “Slow Motion” and “Orienta-
tion ‘Face Up’”; the user “mov[es] the handheld [phone] to
a second position [in] response to the received call” (318),
described as “Fast Motion”; and the user “continu[es] to
hold the handheld [phone] in the second position” (320),
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4 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
described as involving “Slow Motion” and “Orientation ‘Top
Up.’” Id. Fig. 3 & col. 6 l. 56–col. 7 l. 1. The system recog-
nizes this sequence as a “Motion Profile,” which results in
a command to “answer . . . the call for the handheld device.”
Id. col. 8 ll. 2–12.
Independent claim 1 of the ’106 patent recites:
1. A motion based input system comprising:
a processor in communication with a memory;
a motion sensor in communication with the proces-
sor;
the processor to acquire movement data from the
motion sensor;
a manager configured to execute on the processor
and to control motion and orientation detectors,
including:
a motion detector to detect motion, including
identification of a fast motion phase and a
slow motion phase, wherein the motion is clas-
sified as slow and fast based upon comparing
a magnitude of a motion vector with a magni-
tude of gravity; and
an orientation detector to detect orientation to-
wards gravity for each slow motion phase; and
an inference state machine in communication with
the manager configured to: maintain a sequence
of the detected orientations towards gravity, each
orientation in the sequence being limited to a slow
motion phase;
produce a profile description for the sequence of the
detected orientations; and
output an event corresponding to the profile de-
scription.
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
Id. col. 12 ll. 31–51. Independent claim 12 claims “[a]n ar-
ticle for processing motion data” with similar limitations as
claim 1. Id. col. 13 l. 25–col. 14 l. 7. Dependent claims 4,
7, 15, and 18 include various other limitations. KEYnetik
does not argue that these limitations are pertinent to the
patentability of the dependent claims.
Samsung Electronics Co., Ltd. (“Samsung”) filed a pe-
tition for inter partes review of claims 1–20 of the ’106 pa-
tent. The Board instituted inter partes review and found
that all of the challenged claims would have been obvious
to a person of ordinary skill in the art. KEYnetik appeals
the Board’s construction of certain claim terms and the ul-
timate obviousness determination. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
DISCUSSION
In reviewing the Board’s claim construction, “[w]e re-
view underlying factual determinations concerning extrin-
sic evidence for substantial evidence and the ultimate
construction of the claim de novo.” In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015). “If, as
here, the [inter partes review] stems from a petition filed
before November 13, 2018, the claims are given the ‘broad-
est reasonable interpretation’ consistent with the specifica-
tion.” Game & Tech. Co. v. Wargaming Grp. Ltd., 942 F.3d
1343, 1351 (Fed. Cir. 2019); see also Cuozzo Speed Techs.,
LLC v. Lee, 136 S. Ct. 2131, 2142 (2016); Changes to the
Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51340 (United States Patent and
Trademark Office, Oct. 11, 2018).
The Board’s ultimate determination on obviousness is
a legal determination that we review de novo, although we
review any underlying factual findings for substantial
Case: 20-1271 Document: 49 Page: 6 Filed: 01/27/2021
6 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
evidence. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015). 1
I
KEYnetik challenges the Board’s construction of two
limitations that appear in both claim 1 and claim 12, the
only independent claims of the ’106 patent. These argu-
ments are largely repeated in the dissent.
A
We first address the orientation detector limitation.
This limitation is “an orientation detector to detect orien-
tation towards gravity for each slow motion phase” (the
“orientation detector limitation”). ’106 patent, col. 12
ll. 43–44 (claim 1); see also id. col. 13 ll. 37–38 (claim 12).
Under the Board’s construction, this limitation “encom-
passes multiple orientation detections for a given slow mo-
tion phase and does not preclude orientation detection for
fast motions phases.” J.A. 26–27. 2
1 Congress amended 35 U.S.C. § 103 when it enacted
the Leahy–Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). Because the ap-
plication that led to the ’106 patent has an effective filing
date before March 16, 2013, the pre-AIA version applies.
Id. § 3(n)(1), 125 Stat. at 293; see In re Warsaw Orthopedic,
Inc., 832 F.3d 1327, 1329 n.2 (Fed. Cir. 2016).
2 Claim 12 contains an additional limitation not
found in claim 1: “instructions to detect orientation to-
wards gravity for each slow motion phase and absent de-
tecting orientation towards gravity during fast motion
phases, wherein the motion is classified as slow and fast
based upon comparing a magnitude of a motion vector with
a magnitude of gravity.” ’106 patent, col. 13 ll. 37–42 (em-
phasis added). The Board construed “absent detecting ori-
entation towards gravity during fast motion phases” to
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
First, KEYnetik and the dissent argue that “the plain
claim language does not permit multiple orientations to be
detected during a single slow phase,” relying on the use of
the term “for,” the use of the term “orientation” in the sin-
gular without any article in the reference, and the use of
the term “orientation condition” in claim 12. Appellant’s
Br. 27–32. As the Board found, none of these linguistic ar-
guments supports KEYnetik’s position, nor does the speci-
fication. The use of the word “orientation” without an
article does not suggest that the reference is limited to a
single orientation. Though KEYnetik notes that examples
in the specification, such as Figure 3, show one orientation
detected during slow motion phases, as the Board con-
cluded, the specification provides no basis to limit the
claims to those examples, and the claim language under
the broadest reasonable interpretation standard is not so
limited.
The Board credited Samsung’s expert testimony that
“the orientation detector limitation does not preclude mul-
tiple detected orientations for each slow motion phase be-
cause it is consistent with the Specification.” J.A. 27–28.
By contrast, the Board found that KEYnetik’s expert testi-
mony “[did] not include a persuasive explanation” in sup-
port of KEYnetik’s position that “the word ‘for’ would
inform a POSITA that ‘orientation’ is detected for the
phase itself . . . not merely an orientation during the
phase.” Id. at 27 (internal quotation marks omitted). The
dissent argues that the word “for” suggests “an orientation
representative of the condition of the motion phase,” Dis-
senting Op. 3 (quoting Appellant’s Br. 27), but as the Board
noted, the word “for” has broader definitions that fall
within the broadest reasonable interpretation of this
mean “without detecting orientation towards gravity for
fast motion.” J.A. 47. KEYnetik does not appeal this con-
struction.
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8 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
limitation. See J.A. 27, 3013 (“Definition of For by Mer-
riam-Webster” includes “used as a function word to indi-
cate the object or recipient of a perception, desire, or
activity” and “with respect to”).
KEYnetik and the dissent argue that the Board erred
for another reason. KEYnetik contends that “[t]he plain
English definition of the word ‘each’ would inform a
POSITA that orientation must be detected for two or more
slow motion phases.” Appellant’s Br. 40 (emphasis omit-
ted). On this point, the Board credited Samsung’s expert
testimony that “the orientation detector limitation could be
satisfied by only one slow motion phase because, in the con-
text of the claims, ‘each’ can refer to one or more.” J.A. 32.
The Board also credited Samsung’s expert testimony that
“[a]pplying the plain and ordinary meaning, this claim lan-
guage does not require there to be more than one slow mo-
tion phase” and that “if there was only one slow motion
phase and orientation was detected for that one slow mo-
tion phase; then the claim is satisfied because an orienta-
tion is detected for ‘each’ slow motion phase.” Id.
(alteration in original).
The Board’s construction is consistent with ordinary
English usage of the term “each.” “Each” indicates there is
a set with potentially multiple members, and that each of
these potential members of the set has defined character-
istics. This is made clear by the more general definitions
in the Oxford English Dictionary. The word “each” used as
an adjective can mean “to give the same sense in relation
to individual members of an identifiable set as all or both
before a plural noun give in relation to the aggregate.”
Each, Oxford English Dictionary,
https://www.oed.com/view/Entry/58924 (last visited Jan.
26, 2021).
The word “set” can mean “[a]n assemblage of distinct
entities, either individually specified or which satisfy cer-
tain specified conditions.” Set, Oxford English Dictionary,
Case: 20-1271 Document: 49 Page: 9 Filed: 01/27/2021
KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
https://www.oed.com/view/Entry/176794 (last visited Jan.
26, 2021). A “set” need not consist of multiple things and
may consist of nothing, i.e., an “empty set.” Id. 3
Considering the intrinsic and extrinsic evidence, we
see no error in the Board’s construction of the orientation
detector limitation.
B
We next address the sequence limitation. The se-
quence limitation is “an inference state machine . . . config-
ured to: maintain a sequence of the detected orientations
towards gravity, each orientation in the sequence being
limited to a slow motion phase” (“the sequence limitation”).
’106 patent, col. 12 ll. 45–48 (claim 1); see also id. col. 14
ll. 1–3 (claim 12). Under the Board’s construction, this lim-
itation “does not preclude two or more orientations in the
sequence being limited to the same slow motion phase,”
J.A. 34–35, and “the inference state machine maintains the
sequence for slow motion and does not preclude maintain-
ing orientations for both slow motion and fast motion, pro-
vided at least consecutive orientations correspond to a slow
motion phase,” id. at 47.
KEYnetik and the dissent argue that “[t]he broadest
reasonable interpretation of ‘being limited to a slow motion
phase’ of the Sequence Limitation requires ‘precluding
3 KEYnetik relies on Alcohol Monitoring Sys., Inc. v.
Actsoft, Inc., 414 F. App’x 294 (Fed. Cir. 2011). In that case
we considered a claim limitation that required “transmit-
ting each of” certain “measurement results.” Id. at 296.
We held that the limitation as properly construed “re-
quire[d] transmitting every measurement result . . . in a
way that the measurement results are ‘separately identifi-
able.’” Id. at 300 (emphases omitted). Our holding turned
on the definition of “each” meaning “distinct” rather than
meaning one of a plurality. Id. at 299–300.
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10 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
orientations detected during fast motion’ from being main-
tained in the claimed sequence.” Appellant’s Br. 45 (em-
phases omitted). KEYnetik argues that “the claimed
‘motion based input system’ (claim 1) or ‘article’ (claim 12)
must itself be configured to limit the maintained sequence
to only those orientations detected during a slow motion
phase.” Id. (emphases omitted).
The Board disagreed, finding that “although the claim
recites that the inference state machine is configured to
maintain the sequence of detected orientations, the plain
meaning of ‘each orientation in the sequence being limited
to a slow motion phase’ does not require the inference state
machine to have orchestrated the limiting of the orienta-
tions to those corresponding to slow motion.” J.A. 37. In
other words, the sequence limitation “does not require the
inference state machine to actively limit the maintained
sequence to slow motion phases.” Id. at 57.
The Board provided an example of the following “long
sequence of detected orientations that has been maintained
by a hypothetical inference state machine, together with
the motion classification during which the orientation was
detected for each.” Id. at 35–36.
The Board noted that “[w]ithin the larger sequence 1–
4, consecutive sequence numbers 2-3 constitute a ‘se-
quence’ of orientations,” where the two orientations are
each limited to a slow motion phase. Id. at 36.
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
We see no reason why a system that can maintain a
sequence of only 2–3 cannot be within the claim limitation
even though the sequence of 1–4 does not fall within the
claim limitation. We agree with the Board that, under the
broadest reasonable interpretation standard, “claim 1 al-
lows continuously maintaining orientations during both
fast motion and slow motion phases, provided a sequence
of orientations is maintained [i.e., merely consecutive ori-
entations corresponding to slow motions] that is limited to
slow motion phases.” J.A. 42 (alteration in original) (quot-
ing id. at 332 (institution decision)). Claims 1 and 12 use
the signal “comprising,” ’106 patent, col. 12 l. 31, col. 13
l. 26, “which means that the named elements are essential,
but other elements may be added and still form a construct
within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
KEYnetik contends that the Board’s interpretation of
the sequence limitation is inconsistent with the prosecu-
tion history. KEYnetik notes that “[d]uring prosecution,
the examiner initially rejected the claims as obvious under
Huang and Marvit,” and “[i]n response, the Patentee
amended the claims, including by adding ‘each orientation
in the sequence being limited to a slow motion phase’ to the
Sequence Limitation.” Appellant’s Br. 47 (emphasis omit-
ted). The applicant stated in the prosecution history that
“neither [Marvit] nor Huang teach the aspect pertaining to
classifying motion into fast and slow motion phases and
calculating orientation towards gravity only for the slow
motion phases.” J.A. 41 (alteration in original) (quoting
J.A. 1081) (emphasis omitted). According to KEYnetik, the
amendment was added “to distinguish [the] invention over
both Huang and Marvit” because the “[e]vent profiles of
Marvit and Huang are based on all motion phases and are
not limited to orientations for slow motion phases.” Appel-
lant’s Br. 47 (alteration in original) (quoting J.A. 1080–81).
KEYnetik argues that this amendment “disclaimed main-
taining sequences based on ‘all motion phases.’” Id.
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12 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
The Board was “not persuaded these statements
amount to a clear disclaimer of claim scope such that the
claims must be interpreted to mean orientation is detected
and maintained for slow motion phases only.” J.A. 41. The
Board noted that the statement in the prosecution history
used the term “calculating orientation,” rather than either
“detect[ing] orientation” or “maintain[ing] . . . orienta-
tions,” as used in claim 1. J.A. 41 (alterations in original)
(quoting ’106 patent, col. 12 ll. 31–51). 4 The Board further
noted that “the word ‘only’ does not appear in claim 1,” id.,
nor does it appear in claim 12, see ’106 patent, col. 13 l. 24–
col. 14 l. 7, thus suggesting that the sequence limitation in
those claims does not prohibit detecting and maintaining
(as opposed to calculating) orientations during fast motion
phases. 5
We see no error in the Board’s construction of the se-
quence limitation.
II
KEYnetik next argues that the Board erred in finding
a motivation to combine two of the prior art references,
4 The specification refers to the lack of calculating (or
processing) orientation during fast motion phases in de-
scribing Figure 2 of the ’106 patent, noting that “if a fast
motion is detected . . . , the motion data is not communi-
cated (and therefore not shown) to the orientation detector
. . . for processing.” ’106 patent, col. 6 ll. 50–52.
5 By contrast, claim 4, which depends from claim 1,
recites “instructions to avoid detecting orientation during
a fast motion condition.” ‘106 patent, col. 12 ll. 61–63.
Claim 15, which depends from claim 12, recites “instruc-
tions to avoid detecting orientation during a fast motion
condition.” Id. col. 14 ll. 17–18.
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 13
Linjama 6 and Tosaki, 7 which the Board relied on in con-
cluding that claims 4, 7, 15, and 18 were invalid. 8
Linjama provides “computer program products . . . to
sense orientations or sequence of orientations, i.e. gestures,
of mobile devices.” J.A. 1208 ¶ 7. “The orientation or se-
quence of orientations control components and/or functions
of the mobile device.” Id. In one embodiment of Linjama,
a “mobile terminal” may comprise “one or more motion sen-
sors” that “are configured to determine whether the mobile
terminal is moving.” J.A. 1211 ¶ 52. For example, the mo-
tion sensor may determine “that the mobile terminal is
substantially stationary,” and an “orientation sensor” may
signal “that the mobile terminal is in a downward orienta-
tion.” Id. “This combination of substantially stationary
and downward orientation may correspond to a predefined
gesture,” which is recognized by a “gesture detector.” Id.
The gesture detector then sends a “control signal” that “cor-
respond[s] to inactivating the audible sounds of the mobile
terminal.” Id.
Tosaki discloses “[a]n input device in which a player
moves the whole of the input device and a game processing
device for processing a simulated game.” Tosaki, Abstract.
“The input device includes detecting means for detecting
6 U.S. Patent Application Publication No.
2008/0229255 A1.
7 U.S. Patent No. 6,312,335 B1.
8 The Board relied on the combination of Linjama,
Tosaki, and Lehrman, U.S. Patent No. 6,703,939 B2, as the
sole grounds for finding claims 4, 7, 15, and 18 invalid as
obvious. KEYnetik only contests the Board’s finding of a
motivation to combine and reasonable expectation of suc-
cess as to Linjama and Tosaki. KEYnetik does not dispute
motivation to combine or reasonable expectation of success
as to the other combinations relied on by the Board in find-
ing that the other claims were invalid as obvious.
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14 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
physical quantities corresponding to the movement of the
input device as a whole and converting the physical quan-
tities to a detection signal which is output.” Id. One em-
bodiment of Tosaki is a game that “simulates fishing . . . to
an input device and processing technology for [the] same
which simulates a fishing rod . . . without the mechanical
constraints associated with a fishing line.” Id. col. 1 ll. 8–
12.
The Board found that Samsung provided a motivation
to combine Linjama and Tosaki such that Linjama’s ges-
ture detector would “only detect[] orientation during a slow
motion phase” because such a modification “would have
helped ensure that unintended movements (e.g., when the
mobile terminal is not substantially stationary) do not re-
sult in identification of gestures that the user did not in-
tend . . . [thus making] the combined system more user-
friendly.” J.A. 72 (alteration in original) (quoting J.A. 918).
The Board also cited Samsung’s additional rationale to
modify Linjama in light of Tosaki “to save power.” Id.; see
also id. at 918. The Board noted that Samsung’s “‘power
saving’ motivation” was “unrebutted” and supported by
“convincing” expert testimony. Id. at 75.
KEYnetik argues that “Linjama teaches detecting mo-
tion AND orientation at the same time, which Tosaki pro-
hibits because it teaches detecting orientation OR
movement, but never detects both motion and orientation,”
and therefore, the references teach away from each other.
Appellant’s Br. 61.
“A reference may be said to teach away when a person
of ordinary skill, upon reading the reference, would be dis-
couraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). KEYnetik provides no rationale as to why
a person of ordinary skill would be discouraged from apply-
ing Tosaki to Linjama, or that the combination of the two
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 15
would result in a direction divergent from that taken by the
patentee. We see no error in the Board’s determination of
a motivation to combine.
III
KEYnetik argues that “the Board erred in concluding
that [Samsung] met its burden in showing that a POSITA
would . . . have a reasonable expectation of success in com-
bining Linjama and Tosaki.” Appellant’s Br. 59. As dis-
cussed earlier, this alleged error affects only the Board’s
determination of invalidity only for claims 4, 7, 15, and 18.
KEYnetik argues that the Board committed legal error in
stating that “Petitioner has no such ‘burden’ to show that
a POSITA would have had a reasonable expectation of suc-
cess in combining the references.” Id. (quoting J.A. 76).
We agree with KEYnetik and remand to the Board to make
a determination of reasonable expectation of success in
combining Linjama and Tosaki with respect to claims 4, 7,
15, and 18.
“[W]here a party argues a skilled artisan would have
been motivated to combine references, it must show the ar-
tisan ‘would have had a reasonable expectation of success
from doing so.’” Arctic Cat Inc. v. Bombardier Recreational
Prod. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quot-
ing In re Cyclobenzaprine Hydrochloride Extended-Release
Capsule Patent Litig., 676 F.3d 1063, 1069 (Fed. Cir.
2012)). It was Samsung’s “burden” to demonstrate “that
the skilled artisan would have had a reasonable expecta-
tion of success” in combining references. Intelligent Bio-
Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
68 (Fed. Cir. 2016) (quoting Kinetic Concepts, Inc. v. Smith
& Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)).
The Board erred in assigning no burden to Samsung
and making no finding as to reasonable expectation of suc-
cess in combining the contested references. We vacate the
Board’s final determination of obviousness as to claims 4,
7, 15, and 18, and remand to the Board to make a
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16 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
determination of whether there was reasonable expecta-
tion of success in combining Linjama and Tosaki.
CONCLUSION
We affirm the Board’s claim construction, determina-
tion of motivation to combine Linjama and Tosaki, and ob-
viousness determination as to claims 1–3, 5–6, 8–14, 16–
17, and 19–20. We vacate the portion of the Board’s deci-
sion regarding reasonable expectation of success and its ob-
viousness determination as to claims 4, 7, 15, and 18, and
we remand for the Board to make a determination of rea-
sonable expectation of success to combine Linjama and To-
saki.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
Case: 20-1271 Document: 49 Page: 17 Filed: 01/27/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KEYNETIK, INC.,
Appellant
v.
SAMSUNG ELECTRONICS CO., LTD.,
Appellee
______________________
2020-1271
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00986.
______________________
O’MALLEY, Circuit Judge, concurring in part and dissent-
ing in part.
The Board found all claims of the ’106 patent unpatent-
able as obvious in view of the prior art. Samsung Elecs. Co.
v. KEYnetik, Inc., No. IPR2018-00986, 2019 Pat. App.
LEXIS 13034 (P.T.A.B. Dec. 18, 2019) (“Board Decision”).
I agree with the majority that the Board’s analysis of
claims 4, 7, 15, and 18 was fundamentally flawed because
it applied an incorrect legal standard. As to those claims,
the Board stated that Samsung had no burden to establish
a reasonable expectation of success from combining the
prior art references at issue. We have held the exact
Case: 20-1271 Document: 49 Page: 18 Filed: 01/27/2021
2 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
opposite. Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359,1367–68 (Fed. Cir. 2016) (It is the pe-
titioner’s “burden to demonstrate both ‘that a skilled arti-
san would have been motivated to combine the teachings of
the prior art references to achieve the claimed invention,
and that the skilled artisan would have had a reasonable
expectation of success in doing so.’”). The Board’s error on
this point could not be clearer.
Although I agree with the majority’s decision to re-
mand to correct that error, there are other errors which the
majority lets stand. In particular, I believe the Board erred
in construing the “orientation detector” limitation and the
“sequence” limitation—terms that appear in both claim 1
and claim 12, the only independent claims at issue—and
that those errors infected the obviousness analysis across
all claims. In my view, the claim construction should be
reversed and the Board’s obviousness analysis, which re-
lies on that construction, should be vacated and remanded
to correct those errors as well.
I.
Claim 1 of the ’106 patent recites “an orientation detec-
tor to detect orientation towards gravity for each slow mo-
tion phase” (“the orientation detector limitation”). ’106
patent, col. 12, ll. 43–44. 1 The Board concluded that this
limitation “does not preclude detecting orientation during
fast motion phases and also does not preclude multiple ori-
entations being detected during a slow motion phase,
which could be the only slow motion phase.” Board Deci-
sion, 2019 Pat. App. LEXIS 13034, at *24. In reaching this
construction, the Board expressly found that: (1) “multiple
orientations may be detected for a single ‘phase’ of slow
1 Claim 12 includes similar language: “instructions
to detect orientation towards gravity for each slow motion
phase . . . .” ’106 patent, at col. 13, ll. 37–39.
Case: 20-1271 Document: 49 Page: 19 Filed: 01/27/2021
KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
motion;” (2) “no disclosure in the Specification [] precludes
the motion detector from continuously providing accelera-
tor data to the orientation detector during a single period
of slow motion;” and (3) the “orientation detector limita-
tion” “does not preclude only one slow motion phase” be-
cause the word “each” in the phrase “for each slow motion
phase” “can refer to one or more.” Id. at *20–24. While the
majority accepts these conclusions, as explained below, the
Board’s findings are inconsistent with both the plain lan-
guage of the claim and the specification, and its construc-
tion of the word “each” defies common English usage.
Turning first to the claim language, as KEYnetik
points out, the orientation detector limitation’s use of the
singular word “orientation” and the word “for” suggests
that “a single ‘orientation’ is detected for the phase itself—
i.e., an orientation representative of the condition of the
motion phase that had been previously identified as ‘slow’
by the ‘motion detector.’” Appellant’s Br. 27. Although the
Board concluded that the orientation detector limitation
“does not preclude multiple orientations being detected
during a slow motion phase,” nothing in the claim language
itself permits detection of multiple orientations during a
single slow motion phase. Board Decision, 2019 Pat. App.
LEXIS 13034, at *22.
Importantly, the claim does not recite “detect orienta-
tions” (plural) for each slow motion phase—it recites detect
“orientation,” which is singular. And, as KEYnetik points
out, the subsequent sequence limitation recites that “a se-
quence of the detected orientations” (plural) is maintained
in the inference state machine, confirming that the preced-
ing use of “orientation” (singular) was intended to be sin-
gular. See Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011) (noting the patentee’s use of both singular and plural
language in the claims suggests the singular use carried
only a singular meaning). As such, the claim language sup-
ports KEYnetik’s view that a single orientation is detected
for each slow motion phase.
Case: 20-1271 Document: 49 Page: 20 Filed: 01/27/2021
4 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
Turning to the specification, although the Board con-
ceded that it “may ‘support’ [KEYnetik’s] construction,” the
Board concluded that KEYnetik “does not persuade us that
the narrower construction is required by the Specification.”
Board Decision, 2019 Pat. App. LEXIS 13034, at *33. Re-
lying on Figure 3, the Board reasoned that, because “slow
motion includes conditions of changing orientation . . . [i]t
is [] axiomatic that a period of slow motion may include dif-
ferent orientations.” Id. But even the majority recognizes
that Figure 3—which depicts an exemplary embodiment of
the claimed invention—shows detection of a single orienta-
tion for each slow motion phase. Maj. Op. at 7.
While it is, of course, “improper to limit the claims to
the particular preferred embodiments described in the
specification,” we have recognized that the “patentee’s
choice of preferred embodiments can shed light on the in-
tended scope of the claims.” Astrazeneca AB v. Mut.
Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004). Here,
Figure 3—which explicitly illustrates how the invention of
the ’106 patent works—sheds light on the intended scope
of the claims and makes clear that there is only one orien-
tation detected for each slow motion phase.
Case: 20-1271 Document: 49 Page: 21 Filed: 01/27/2021
KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
The specification explains that “[t]he motion profile de-
picted in Fig. 3 is as follows: Rest, Motion, Rest, Orienta-
tion Face Up, Motion, Rest, Orientation Top Up.” ’106
patent, at col. 7, ll. 12–14. After the “application event” is
recognized, Figure 3 shows two slow motion phases with an
intervening fast motion phase. The specification states
that “there are two orientation conditions detected, in-
clud[ing] viewing the visual display (352), and maintaining
the handheld in the final position (354).” Id. at col. 7, ll.
10–12. As KEYnetik points out, although orientation is
measured multiple times, Figure 3 clearly shows only one
orientation (i.e., “Face Up” or “Top Up”) detected for each
slow motion phase.
As the majority notes, the Board credited Samsung’s
expert testimony that “the orientation detector limitation
does not preclude multiple detected orientations for each
slow motion phase because it is consistent with the Speci-
fication.” Board Decision, 2019 Pat. App. LEXIS 13034, at
*20. Samsung’s expert was relying on Figure 2, shown be-
low, which the patent describes as “a state diagram
Case: 20-1271 Document: 49 Page: 22 Filed: 01/27/2021
6 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
illustrating the interworking of the motion detector with a
client application.” ’106 patent, col. 2, ll. 49–50.
As KEYnetik points out, Figure 2 does not fully illustrate
the claimed sequence of detected orientations. Instead, it
shows how a stream of motion data (specifically, x, y, and z
acceleration data) passes through the detectors and re-
turns a single “orientation event,” “if such an event is pro-
grammed in the inference state machine (not shown).” Id.
at Fig. 2; id. at col. 6, ll. 52–55. Therefore, on its face, Fig-
ure 2 shows one possible “orientation event” returned to
the manager, which is consistent with Figure 3’s depiction
of only one orientation maintained by the inference state
machine for each slow motion phase. See id. at col. 6, ll.
47–55. Nothing in Figure 2 supports detection of multiple
orientations during a single slow motion phase.
In any event, the Board’s analysis on this point was
flawed. The Board said that it saw “no disclosure in the
Specification that precludes the motion detector from con-
tinuously providing accelerator data to the orientation de-
tector during a single period of slow motion.” Board
Case: 20-1271 Document: 49 Page: 23 Filed: 01/27/2021
KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
Decision, 2019 Pat. App. LEXIS 13034, at *22. As this
court has explained, however, “[t]he correct inquiry in giv-
ing a claim term its broadest reasonable interpretation in
light of the specification is not whether the specification
proscribes or precludes some broad reading of the claim
term adopted by the examiner.” In re Smith Int’l, Inc., 871
F.3d 1375, 1382–83 (Fed. Cir. 2017) (emphasis added). The
Board was required to interpret the claims consistently
with the specification—not assess whether Samsung’s
overly broad reading of the orientation detector limitation
was expressly precluded.
Finally, without any support in the intrinsic record, the
Board found that the orientation detector limitation’s use
of the word “each” in the phrase “detect orientation towards
gravity for each slow motion phase” can refer to “one or
more” slow motion phases. Board Decision, 2019 Pat. App.
LEXIS 13034, at *22–24. In reaching this construction, the
Board credited the conclusory opinion of Samsung’s expert,
who testified that, “in the context of the claims, ‘each’ can
refer to one or more.” Id. at *23–24. We have recognized,
however, that “conclusory, unsupported assertions by ex-
perts as to the definition of a claim term are not useful to a
court.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.
Cir. 2005). Indeed, Samsung presented no evidence to sup-
port its interpretation of “each,” and conceded during oral
argument before the Board that it had not “tried that hard”
to find any evidence. J.A. 729 at ll. 4–9.
The Board then provided its own example of “each”
meaning “one or more,” stating that, “if one addressed a
room full of people and asked each WW1 veteran to stand
and only one person stood, each WW1 veteran would have
stood.” Board Decision, 2019 Pat. App. LEXIS 13034, at
*24. But we have expressly recognized that the plain
meaning of “each” refers to “two or more” people or things.
Alcohol Monitoring Sys., Inc. v. Actsoft, Inc., 414 F. App’x
294, 299–300 (Fed. Cir. 2011) (“We agree with the district
court that the plain meaning of ‘each’ is defined as ‘being
Case: 20-1271 Document: 49 Page: 24 Filed: 01/27/2021
8 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
one of two or more distinct individuals . . . .’” (quoting Mer-
riam-Webster’s Collegiate Dictionary, 390 (11th ed. 2007)).
That the Board came up with an example where the term
“each” might be used differently cannot overcome its gen-
eral usage in the English language, especially where the
Board’s example is grammatically suspect. The proper
phrasing, using the Board’s example, would ask any or all
WW1 veterans to stand, which would account for the pos-
sibility of there being only one (or none).
The Board’s construction, which the majority again ac-
cepts, is inconsistent with the intrinsic record and defies
common English usage of the word “each.” In my view, the
broadest reasonable interpretation of the “orientation de-
tector limitation” consistent with the specification is detect
orientation (singular) of two or more slow motion phases.
II.
Claim 1 also recites “an inference state machine . . .
configured to: maintain a sequence of the detected orienta-
tions towards gravity, each orientation in the sequence be-
ing limited to a slow motion phase” (“the sequence
limitation”). ’106 patent, col. 12, ll. 45–48. 2 Given its con-
struction of the orientation detector limitation, the Board
found that “the plain meaning of the sequence limitation
does not preclude two orientations detected for a single
slow motion phase being maintained as the sequence of de-
tected orientations, each orientation limited to a slow mo-
tion phase (which may be the same slow motion phase).”
Board Decision, 2019 Pat. App. LEXIS 13034, at *26–27.
According to the Board, “the inference state machine main-
tains the sequence for slow motion and does not preclude
2 Claim 12 includes similar language: “instructions
to maintain a sequence of the detected orientations, each
orientation towards gravity in the sequence being limited
to a slow motion phase.” ’106 patent, at col. 14, ll. 1–3.
Case: 20-1271 Document: 49 Page: 25 Filed: 01/27/2021
KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
maintaining orientations for both slow motion and fast mo-
tion, provided at least consecutive orientations correspond
to a slow motion phase.” Id. at *39. The majority once
more accepts the Board’s interpretation. Once more, I can-
not. As explained below, the Board’s construction is incon-
sistent with the intrinsic record and improperly reads
“being limited to a slow motion phase” out of the sequence
limitation.
First, although the Board’s construction allows both
fast motion and slow motion orientations in the sequence,
the claim expressly states that each detected orientation
must be “limited to a slow motion phase.” The Board’s con-
struction improperly reads this language out of the claim,
rendering it meaningless. See Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (holding a patent
claim construction that reads limitations out of a claim is
“contrary to the principle that claim language should not
[be] treated as meaningless”).
As explained above, the claim requires the detection of
two or more slow motion phases, which necessarily re-
quires an intermittent fast motion phase. The specifica-
tion confirms this interpretation. In discussing Figure 3,
the specification explains that, “as an incoming telephone
call is received, the handheld device can be in any position.
During the incoming sequence processing, the user can
move the handheld in any way, and the signal processing
will identify the gesture as long as two orientation condi-
tions intermitted by motion conditions are met.” ’106 pa-
tent, col. 7, ll. 18–30 (emphasis added). In other words, the
specification expressly requires a fast motion phase sepa-
rating the slow motion phases.
Given the intrinsic evidence, I agree with KEYnetik
that the broadest reasonable interpretation of “being lim-
ited to a slow motion phase” in the sequence limitation re-
quires precluding orientations detected during fast motion
from being maintained in the claimed sequence. To find
Case: 20-1271 Document: 49 Page: 26 Filed: 01/27/2021
10 KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD.
otherwise would eviscerate a key feature of the claimed in-
vention. As we recently reiterated, “[a] patent’s statement
of the described invention’s purpose informs the proper
construction of claim terms, including when the task is to
identify the broadest reasonable interpretation.” Kaken
Pharma. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020);
see also In re Power Integrations, Inc., 884 F.3d 1370, 1376–
77 (Fed. Cir. 2018) (because the patent at issue “strives to
eliminate unnecessary components and create a more com-
pact circuit,” the Board’s construction that would include a
“bulky” component was “unduly broad” and “inconsistent”
with the patent’s “focus”).
Here, the specification explains that,
As the call is received the signal processing to
search for a sequence of conditions is started. By
using a sequence of orientation conditions of the
handheld device, the signal processing generates a
fault resilient command absent complex analysis
during periods of fast motion. The presence of one
or more periods of fast motion serves as confirma-
tion that the sequence is a product of intentional
user action(s).
’106 patent, col. 7, ll. 23–30.
By maintaining a “sequence of orientation conditions”
with each orientation in the sequence limited to a slow mo-
tion phase, the ’106 patent is able to confirm that a user’s
gesture “is a product of intentional user action(s).” ’106 pa-
tent, col. 7, ll. 25–30. If, as the Board found, the scope of
the claimed “sequence” included a series of consecutive ori-
entation signals corresponding to a single orientation of a
stationary device—without any intervening fast motion—
there would be no way to confirm that the sequence is the
product of intentional user action. Put simply, the Board’s
construction is both inconsistent with the claim language
and the objective of the claimed invention.
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KEYNETIK, INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
III.
For these reasons, I believe the Board’s constructions
were flawed. As a result, the Board’s obviousness determi-
nations should be vacated, and the case should be re-
manded for further proceedings consistent with the proper
construction of the “orientation detector limitation” and the
“sequence limitation,” as well as for the reasons outlined
by the majority. I must respectfully dissent in part.