IP Law Daily PTAB’s obviousness findings for flash-memory patent affirmed in part, reversed in part
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Monday, November 6, 2017

PTAB’s obviousness findings for flash-memory patent affirmed in part, reversed in part

By Mark Engstrom, J.D.

The Patent Trial and Appeal Board correctly found that 10 claims of a Pavo Solutions patent on a flash memory device with a rotary cover were obvious over prior art, and thus unpatentable, and correctly found that 7 claims of the same patent were not obvious, and thus not unpatentable, the U.S. Court of Appeals for the Federal Circuit has ruled. The Board erred, however, in finding that three additional claims were obvious over prior art. According to the court, the Board should not have distinguished the terms "on" and "formed on" in its construction of the phrases "hinge protuberance on at least one side of the case" and "hinge protuberance formed on at least one side of the case." Remanding the case to reapply the claims as correctly construed was not necessary, however, because the Board’s factual findings supported the non-obvious character of the three additional claims. The findings of the Board were reversed in part and affirmed in part (Pavo Solutions LLC v. Kingston Technology Company, Inc., November 6, 2017, Lourie, A.).

Pavo Solutions LLC appealed from the final written decisions of the PTAB in two inter partes review (IPR) proceedings. Pavo challenged the Board’s findings that 13 claims (claims 8, 9, 11, 12, 14, and 16–23) of its patent on a "Flash memory apparatus having single body type rotary cover" (U.S. Patent No. 6,926,544) were unpatentable as obvious. Kingston Technology Company cross-appealed the Board’s finding that seven claims (claims 1, 2, 4, 5, 7, 13, and 24) were not unpatentable as obvious.

Claim construction. In its construction of the phrases "hinge protuberance on at least one side of the case" and "hinge protuberance formed on at least one side of the case," the Board construed the terms "on" and "formed on" differently. The Federal Circuit agreed with both parties that the Board had erred in distinguishing those terms. It agreed with Pavo, however, with respect to their correct interpretation. In the court’s view, both phrases indicated that a "hinge protuberance" was "attached to or integrated into" the side of the case.

According to the court, the Board had improperly parsed the claim language to focus on the terms "on" and "formed on," and thus overlooked the surrounding claim language and written description of the invention. As a result, the Board reached an unreasonably broad reading of "hinge protuberance on at least one side of the case," and thus inferred a scope that was distinguishable from "hinge protuberance formed on at least one side of the case"—creating a distinction that did not exist in the specification—solely because the words "on" and "formed on" were literally different.

In the court’s view, the terms "on" and "formed on" were used interchangeably when they referred to "hinge protuberance" and "hinge element," and the literal difference in the claim terms, in the context of its surrounding language and the specification, did not give rise to a substantive distinction.

Obviousness. Pavo argued that neither U.S. Patent No. 6,480,390 ("Matsumiya") nor U.S. Design Patent D199,589 ("Hoogesteger") taught a claimed hinge design with a protuberance that "attached to" or "integrated into" the case. Pavo further argued that, even if its claim construction argument was unsuccessful or inapplicable to its "hinged to" claims, a person of skill in the art had no motivation to combine or modify the cited references because the references touted the benefits of complete dust-proof coverage of USB terminals, unlike the flash drive covers of the Pavo patent.

According to the court, the Board considered the lack of motivation argument and properly reasoned that a less-than-optimal result from a combination or modification did not necessarily defeat a finding of motivation. Finding no error in the Board’s analysis, the court concluded that claims 8, 9, and 16–23 were unpatentable as obvious over Matsumiya, in view of U.S. Patent 6,829,672 ("Deng").

Applying the correct construction of "hinge protuberance on at least one side of the case," the court also concluded that the "protuberance on" claims (claims 11, 12, and 14) were not unpatentable as obvious over the cited reference because, as the Board had found, neither Matsumiya nor Hoogesteger taught that the hinge protuberance was attached to or integrated into the side of the case. Although the Board had erred in its construction of the "protuberance on" claims, remand was unnecessary because its underlying factual findings, which supported the non-obviousness character of the "protuberance formed on" claims, also supported—with equal force—the non-obviousness character of the "protuberance on" claims. The court thus concluded that claims 11, 12, and 14 were not unpatentable as obvious.

Regarding the "protuberance formed on" claims, which Kingston had challenged on cross-appeal, the court concluded that the Board had not erred in its claim construction and obviousness conclusions. Applying the correct claim construction, the Board correctly found that the "protuberance formed on" claims were not unpatentable as obvious because neither Matsumiya nor Hoogesteger taught that the hinge protuberance was attached to or integrated into the side of the case. Ultimately, the court found no error in the Board’s analysis or factual findings, and thus concluded that claims 1, 2, 4, 5, 7, and 24 were not unpatentable as obvious.

In sum, claims 8, 9, and 16–23 were unpatentable as obvious over Matsumiya in view of Deng, and claims 1, 2, 7, 11, 12, 14, and 24 were not unpatentable as obvious over the cited references. The court did not disturb the Board’s ruling that claims 4, 5, and 13 were not unpatentable as obvious.

The case is Nos. 2016-2209, 2016-2328, and 2016-2391.

Attorneys: Matthew Carmine Phillips (Laurence & Phillips IP Law, LLP) for Pavo Solutions LLC. David Michael Hoffman (Fish & Richardson, PC) for Kingston Technology Co., Inc.

Companies: Pavo Solutions LLC; Kingston Technology Co., Inc.

MainStory: TopStory Patent TechnologyInternet FedCirNews

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