Nucurrent, Inc. v. Samsung Electronics Co., Ltd.

Case: 21-1605 Document: 55 Page: 1 Filed: 07/14/2022 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit ______________________ NUCURRENT, INC., Appellant v. SAMSUNG ELECTRONICS CO., LTD., Appellee ______________________ 2021-1605, 2021-1606, 2021-1607 ______________________ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019- 01217, PGR2019-00049, PGR2019-00050. ______________________ Decided: July 14, 2022 ______________________ WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellant. Also repre- sented by MICHAEL BRADLEY RAY, JONATHAN TUMINARO, JON WRIGHT. CHETAN BANSAL, Paul Hastings LLP, Washington, DC, argued for appellee. Also represented by STEPHEN BLAKE KINNAIRD, NAVEEN MODI, JEFFREY PADE, JOSEPH PALYS, ALLAN SOOBERT; PAUL ANDERSON, Houston, TX. ______________________ Case: 21-1605 Document: 55 Page: 2 Filed: 07/14/2022 2 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before NEWMAN, STOLL, and STARK, Circuit Judges. STOLL, Circuit Judge. NuCurrent appeals from the Patent Trial and Appeal Board’s final written decisions in three post-grant proceed- ings concluding that the challenged claims of U.S. Patent Nos. 9,941,729 and 10,063,100 are unpatentable as obvi- ous. Because substantial evidence supports the Board’s conclusions, we affirm. BACKGROUND The patents are directed to a compact antenna capable of operating at multiple frequency bands. ’100 patent col. 4 ll. 4–7, col. 4 l. 63–col. 5 l. 19. The written description ex- plains that the antenna includes “a first, outer coil,” (e.g., coil portion 144), “a second, interior coil,” (e.g., coil portion 146), id. at col. 10 ll. 26–30, col. 28 ll. 34–40, and “a plural- ity of terminal connections that are strategically placed on [] first and second inductor coils,” (e.g., electrical connec- tion points 148, 150, 152), id. at col. 11 ll. 32–44, col. 28 ll. 13–16. Id. Fig. 9. Case: 21-1605 Document: 55 Page: 3 Filed: 07/14/2022 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. 3 According to the written description, “[c]onnecting the various terminals in different combinations . . . provides the antenna . . . with different adjustable inductances which, in turn, modifies the operating frequency or operat- ing mode of the antenna.” Id. at col. 13 ll. 32–33. Claim 1 of the ’100 patent is representative and recites in relevant part: 1. An electrical system, comprising: a) an antenna, comprising: i) a first conductive wire forming a first coil ... ii) a second conductive wire forming a sec- ond coil . . . iii) a third gap separating an outermost turn of the second coil from the innermost turn of the first coil . . . iv) a first terminal electrically connected to the first end of the first coil, a second terminal electrically connected to the second end of the second coil and a third terminal electrically con- nected to either of the first or second coils; b) a control circuit electrically connected to at least one of the first, second and third antenna terminals, wherein the control circuit is config- ured to control the operation of the antenna; c) wherein a tunable inductance is generatable by electrically connecting two of the first, second, and third terminals . . . . Case: 21-1605 Document: 55 Page: 4 Filed: 07/14/2022 4 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. Id. at col. 32 l. 40–col. 33 l. 15 (emphasis added to relevant claim elements). 1 Samsung filed a petition for inter partes review (IPR2019-01217) of various claims of the ’729 patent, and two petitions for post-grant review (PGR2019-00049 and PGR2019-00050) of various claims of the ’100 patent. J.A. 1–42, J.A. 43–64, J.A. 65–96. In its petitions, Sam- sung relied on Riehl, 2 the primary prior art reference, to teach an antenna having (1) two coils and (2) first, second, and third terminals connected to the coils that are electri- cally connectable in various combinations to produce differ- ent inductances. J.A. 313–46, J.A. 4812–36. During the post-grant proceedings, neither Samsung nor the patent owner NuCurrent offered constructions for any terms in the proceedings. J.A. 313, J.A. 461–62, J.A. 4811–12, J.A. 4944. The Board instituted review in each proceeding. J.A. 426, J.A. 2922, J.A. 4905. In its final written decisions, the Board determined that it did not need to explicitly construe any terms in the challenged pa- tents. J.A. 11–12, J.A. 51–52, J.A. 72–73. The Board ulti- mately concluded that each of the challenged claims were unpatentable as obvious. J.A. 40, J.A. 63, J.A. 95. The Board also determined that the claims were unpatentable for lack of written description. J.A. 63. NuCurrent appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 1 The ’729 and ’100 patents share a written descrip- tion and have similar claims. The parties—and our court, in this opinion—thus focus on the ’100 patent and PGR2019-00049. 2 U.S. Patent Pub. No. 2014/0035383. Case: 21-1605 Document: 55 Page: 5 Filed: 07/14/2022 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. 5 DISCUSSION Obviousness is a legal question based on underlying findings of fact. Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1221 (Fed. Cir. 2022). We review the Board’s ulti- mate obviousness determination de novo and underlying factual findings for substantial evidence such that a “rea- sonable fact finder could have arrived at the agency’s deci- sion.” OSI Pharms., LLC v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). Claim constructions are sim- ilarly legal questions that we review de novo. Dyfan, LLC v. Target Corp, 28 F.4th 1360, 1364 (Fed. Cir. 2022). On appeal, NuCurrent argues that the Board’s obvious- ness determination “rests on an incorrect claim construc- tion of the term ‘terminal.’” Appellant’s Br. 39. According to NuCurrent, “a ‘terminal’ is a point on a coil that is avail- able for connection to external circuitry.” Id. at 40. Nu- Current asserts that because the “claimed ‘terminals’ are terminals for the antenna, not for the coils,” the claimed “terminals” must be available for connection to circuitry ex- ternal to the antenna. Id. at 47. NuCurrent further alleges that the Board “implicitly construed the term more broadly than its ordinary meaning, concluding that an interior con- nection point of a coil that is not available for circuitry ex- ternal to the antenna can qualify as a terminal.” Id. at 39. Under its proffered construction, NuCurrent contends that Riehl “discloses only two terminals, but the challenged claims require three,” and thus the Board’s obviousness de- termination “cannot stand.” Id. In response, Samsung as- serts that “the Board never construed the term,” Appellee’s Br. 41, and that the Board “found the prior art (Riehl) dis- closed the claimed terminals even under NuCurrent’s in- terpretation of that term,” id. at 40. We affirm the Board’s conclusion on obviousness for two reasons. First, setting aside Samsung’s waiver argu- ment and concerns over whether the Board construed Case: 21-1605 Document: 55 Page: 6 Filed: 07/14/2022 6 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. “terminal” to include connections for internal (as opposed to external) circuity, we cannot adopt the claim construc- tion that NuCurrent advocates on appeal. We conclude that the proper construction of “terminal” in light of the in- trinsic evidence is not limited to connections available to external circuitry. Indeed, we find no support for NuCur- rent’s construction in the intrinsic record—not one refer- ence to “terminal” within the written description requires the terminal be available for connection to only external circuitry, suggesting that the term “terminal” can encom- pass connections to internal circuitry as well. Nor does the claim language support NuCurrent’s construction—the claims require nothing more than an antenna comprising terminals electrically connected to the coils and connecta- ble to a control circuit. ’100 patent col. 32 l. 40–col. 33 l. 15. Second, even under NuCurrent’s proposed construc- tion, substantial evidence supports the Board’s finding that Riehl teaches the three terminals as claimed. The Board cited and relied on testimony from Samsung’s expert, Dr. Baker, that a person of ordinary skill would have un- derstood that Riehl discloses three terminals. J.A. 29–34 (citing J.A. 678–82), J.A. 85–90 (citing J.A. 5119–23). For example, as illustrated below in Dr. Baker’s annotated ver- sion of Figure 5, Riehl shows two coils (L2 and L3) and three connection points (connection points 1, 2, and 3): Case: 21-1605 Document: 55 Page: 7 Filed: 07/14/2022 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. 7 J.A. 678, 5119. According to Dr. Baker, a person of ordi- nary skill would have understood that each of Riehl’s three connection points is a component of a terminal because “they allow for connections between the coils and, for ex- ample, the capacitors C2a, C2b, and C2q.” J.A. 679, 5120. Relying on Dr. Baker’s unrebutted declaration, the Board found that such a capacitor network was “external cir- cuitry.” J.A. 34–35 (citing J.A. 679), J.A. 89–90 (citing J.A. 5120). In his declaration, Dr. Baker explained that a person of ordinary skill would have understood a terminal to comprise not only Riehl’s connection points, but also ad- ditional conductive material used to connect external cir- cuitry to those connection points on the coil. J.A. 679, 5120. Crediting Dr. Baker’s testimony as consistent with Riehl’s disclosure and that of the ’100 patent, the Board found that Riehl’s interconnection points teach the claimed “termi- nals” even under NuCurrent’s construction because they are physically available for connection to external circuitry, such as the matching network capacitors C2a, C2b, and C2q. J.A. 33 (citing J.A. 679), J.A. 86–89 (citing J.A. 5120). Indeed, the ’100 patent states that “the first electrical con- nection point 148 may serve as the first terminal 34, the third electrical connection point 152 may serve as the sec- ond terminal 36 and the second electrical connection point 150 may serve as the third terminal 35,” ’100 patent col. 28 Case: 21-1605 Document: 55 Page: 8 Filed: 07/14/2022 8 NUCURRENT, INC. v. SAMSUNG ELECTRONICS CO., LTD. ll. 28–32, and that “terminal leads 154, 156, 158, such as electrically conductive wires, may be attached to these elec- trical connection points to create antenna terminals,” id. at col. 28 ll. 25–28. Because the Board’s finding that Riehl teaches three terminals is supported by substantial evidence, we affirm the Board’s obviousness determination. We therefore need not reach the Board’s finding regarding lack of written de- scription. 3 CONCLUSION We have considered NuCurrent’s remaining argu- ments and find them unpersuasive. For the reasons above, we affirm. AFFIRMED 3 We are doubtful that the Board got the written de- scription issue right, but we do not reach the issue having affirmed on obviousness.