Case: 20-1859 Document: 48 Page: 1 Filed: 04/13/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., HTC CORPORATION, HTC AMERICA,
INC.,
Appellants
v.
INVT SPE LLC,
Appellee
______________________
2020-1859
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01473.
______________________
Decided: April 13, 2021
______________________
ADAM PRESCOTT SEITZ, Erise IP, P.A., Overland Park,
KS, for appellant Apple Inc. Also represented by PAUL R.
HART, Greenwood Village, CO.
STEPHEN S. KORNICZKY, Sheppard, Mullin, Richter &
Hampton LLP, San Diego, CA, for appellants HTC Corpo-
ration, HTC America, Inc. Also represented by MARTIN
BADER, ERICKA SCHULZ.
Case: 20-1859 Document: 48 Page: 2 Filed: 04/13/2021
2 APPLE INC. v. INVT SPE LLC
CYRUS ALCORN MORTON, Robins Kaplan LLP, Minne-
apolis, MN, for appellee. Also represented by JOHN K.
HARTING, BRENDA L. JOLY, CHRISTOPHER SEIDL.
______________________
Before MOORE, TARANTO, and CHEN, Circuit Judges.
MOORE, Circuit Judge.
Apple Inc., HTC Corp., and HTC America, Inc. (collec-
tively, Appellants) appeal a Patent Trial and Appeal Board
final written decision holding Appellants failed to prove
claims 1–3, 5–9, and 11 of U.S. Patent No. 6,611,676 would
have been obvious over Keskitalo 1 in view of Lindell. 2 We
affirm.
BACKGROUND
The ’676 patent is directed to a radio communications
system with a variable transmission rate. The ’676 patent
states that when a prior art radio communications system
encountered low reception quality, it would compensate by
increasing transmission power. See ’676 patent at 1:15–32.
This coping strategy, however, was “likely to increase in-
terference with other mobile stations to an intolerable de-
gree.” Id. at 1:46–55. The ’676 patent thus discloses
decreasing the transmission rate of the radio signal, which
improves reception quality without increasing interference
with other mobile devices. Id. at 1:65–2:4, 7:4–25. As
claimed, however, this occurs only after determining
whether the “average transmission power” exceeds a pre-
determined threshold. Id. at claim 1; see also id. at 13:32–
14:8, 11:29–55. To decrease transmission rate in a conven-
tional Code Division Multiple Access (CDMA) system, the
’676 patent discloses increasing the “spreading factor,” id.
1 PCT Application Publication No. WO 95/10145.
2 U.S. Patent No. 5,524,275.
Case: 20-1859 Document: 48 Page: 3 Filed: 04/13/2021
APPLE INC. v. INVT SPE LLC 3
at 6:67–7:3, 7:13–16, also known as the “spreading ratio.”
Claim 1 is illustrative and recites:
1. A radio communication apparatus having radio
transmitting means and radio receiving means,
said apparatus comprising:
transmission power control means for in-
creasing or decreasing transmission power
of said transmitting means according to
transmission power control information re-
ceived by said receiving means;
average transmission power calculating
means for calculating an average value of
the transmission power of said transmit-
ting means;
allowable transmission power holding
means for holding a predetermined allowa-
ble transmission power value;
comparing means for comparing the aver-
age value with the allowable transmission
power value; and
rate changing means for changing a trans-
mission rate according to the comparison
result in said comparing means.
Appellants petitioned for inter partes review of claims
1–3, 5–9, and 11, alleging those claims would have been
obvious over Keskitalo in view of Lindell. In a final written
decision, the Board held that Appellants failed to prove ob-
viousness. Appellants appeal. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Obviousness is a question of law based on underlying
facts. Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d
1286, 1291 (Fed. Cir. 2018). We review the Board’s
Case: 20-1859 Document: 48 Page: 4 Filed: 04/13/2021
4 APPLE INC. v. INVT SPE LLC
ultimate conclusion of obviousness de novo, and the under-
lying factual findings for substantial evidence. Id.
Whether a skilled artisan would have been motivated to
combine or modify the teachings in the prior art is a ques-
tion of fact. Id.
In holding the challenged claims would not have been
obvious, the Board found there was no motivation for a
skilled artisan to combine Keskitalo with Lindell. Specifi-
cally, the Board found no motivation to modify Keskitalo’s
measurement of instantaneous transmission power to in-
stead measure average transmission power, as Lindell
teaches. The Board reasoned that Appellants failed to ex-
plain why a skilled artisan would look to Lindell to imple-
ment changes in Keskitalo. Because substantial evidence
supports that finding, we affirm the Board’s decision. 3
As the Board found, Keskitalo is “a data throughput
reference.” J.A. 28. It discloses improving reception qual-
ity in a CDMA system by adjusting the spreading ratio.
J.A. 801 at Abstract. Keskitalo recognizes there are situa-
tions where it is not possible to compensate for low recep-
tion quality by simply increasing transmission power, such
as when transmission power is already at its highest value.
J.A. 805:19–25. Keskitalo further recognizes that increas-
ing the spreading ratio improves reception quality without
increasing interference with other devices. J.A. 806:30–
807:2. Accordingly, Keskitalo teaches adjusting the
spreading ratio, rather than transmission power, to ad-
dress reception quality issues. J.A. 806:18–23. Appellants
concede Keskitalo does not disclose measuring the claimed
3 The Board also found that neither Keskitalo nor
Lindell discloses the claimed “rate changing means.” Be-
cause we affirm the Board’s conclusion of nonobviousness
based on the lack of a motivation to combine, we do not
reach this issue.
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APPLE INC. v. INVT SPE LLC 5
average transmission power. E.g., Appellants’ Br. at 9, 13,
14, 22.
Lindell, on the other hand, is “an RF exposure refer-
ence,” as the Board found. J.A. 28. It discloses a radio
transmitter power controller that automatically restricts
transmission power when the average power approaches or
exceeds a predetermined limit. J.A. 820 at Abstract. The
purpose of Lindell’s power controller is to limit a user’s ex-
posure to radiofrequency (RF) radiation, which is corre-
lated with transmission power. J.A. 825 at 1:5–45. The
power controller uses an average power determining circuit
11 to determine the average transmission power during a
preceding time period, Tave. J.A. 826 at 4:5–15. Lindell
teaches that Tave may be, for example, “6 or 30 minutes.”
J.A. 825 at 1:37–39.
Substantial evidence supports the Board’s finding that
a skilled artisan would not have been motivated to modify
Keskitalo to measure average transmission power in ac-
cordance with Lindell’s teachings. Although Keskitalo and
Lindell both involve measuring transmission power, they
do so for different reasons, on different time scales, and
compare the results to different thresholds. Keskitalo com-
pares transmission power to the maximum possible value
to determine whether its system must resort to decreasing
transmission rate to improve reception quality. See J.A
805:9–25, 806:13–23. Lindell, by contrast, compares aver-
age transmission power to the maximum permitted value
to determine whether its system must decrease transmis-
sion power to limit RF exposure. See J.A. 825 at 1:5–2:17.
Appellants acknowledge these functionalities are “dis-
tinct.” E.g., Appellants’ Br. at 25. Further, Lindell dis-
closes a relatively long averaging time (“e.g., 6 or 30
minutes”), and INVT’s expert testified that Keskitalo re-
quires short-term power adjustments (i.e., every 1–1.25
milliseconds). J.A. 825 at 1:37–39; J.A. 1402–03. Appel-
lants concede that Lindell operates “on much longer time
scales” than Keskitalo. See Appellants’ Br. at 30. Given
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6 APPLE INC. v. INVT SPE LLC
these disparities, a reasonable fact finder could conclude
there was no motivation to combine Keskitalo and Lindell.
Appellants argue that the Board erred by misconstru-
ing their proposed combination. In particular, Appellants
argue the Board mistakenly believed the proposed combi-
nation merges Keskitalo’s maximum possible power
threshold with Lindell’s maximum permitted power thresh-
old, rather than replacing Keskitalo’s instantaneous power
measurement with an average power measurement. For
support, Appellants rely on out-of-context quotations from
the Board’s final written decision. See Appellants’ Br. at
23–25. Read in context, however, it is clear the Board cor-
rectly understood and analyzed Appellants’ proposed com-
bination. For example, in summarizing the parties’
positions, the Board explained:
Petitioner contends that . . . , rather than utilizing
an instantaneous maximum power threshold, the
system of Keskitalo would use an average power as
its maximum power threshold. According to Peti-
tioner, upon reading the disclosure of Keskitalo, a
POSITA would have known that benefits can be re-
alized by setting a maximum power transmission
threshold based on an average transmission power
value, as taught by Lindell . . . . That is, Petitioner
argues that, based on Lindell’s disclosure and its
expert declaration testimony, one of ordinary skill
in the art would have reason and ability to modify
Keskitalo with the technique for calculating an av-
erage transmission power value of a mobile station
and utilizing this value to impose a maximum out-
put, as taught by Lindell.
J.A. 22–23 (citations and internal quotation marks omit-
ted). And in finding no motivation to combine, the Board
again demonstrated its grasp of Appellants’ proposed com-
bination:
Case: 20-1859 Document: 48 Page: 7 Filed: 04/13/2021
APPLE INC. v. INVT SPE LLC 7
In weighing the evidence before us, we find more
persuasive the position of Patent Owner. In partic-
ular, we are unpersuaded by Petitioner’s conten-
tion that it would have been obvious to modify
Keskitalo such that its predetermined thresholds
for transmission power are average transmission
power values in accordance with the teachings of
Lindell.
J.A. 24 (emphasis in original); see also J.A. 31 (holding it
would not have been obvious “to modify Keskitalo’s dis-
closed control processor . . . such that the maximum value
is the average transmission power value, in accordance
with the teachings of Lindell”). We see no error in the
Board’s understanding of Appellants’ proposed combina-
tion.
CONCLUSION
Because substantial evidence supports the Board’s
finding of no motivation to combine Keskitalo and Lindell,
we affirm the Board’s determination that Appellants failed
to prove claims 1–3, 5–9, and 11 of the ’676 patent would
have been obvious.
AFFIRMED