CAFC Partially Vacates PTAB for Legal Error in ‘Reasonable Expectation of Success’ Analysis

By La'Cee Conley
January 28, 2021

“The CAFC found that the PTAB failed to properly assess the appellant’s argument regarding a reasonable expectation of success when combining references and therefore vacated the decision and remanded the case so that the Board could make such a determination.”

On January 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the Patent Trial and Appeal Board (PTAB) in its inter partes review of claims 1—20 of U.S. Patent No. 8,370,106 (the ‘106 patent) assigned to KEYnetik, Inc. (KEYnetik). Judge O’Malley concurred in part and dissented in part.

In particular, the CAFC concluded that the PTAB did not err in its claim construction regarding an orientation detection limitation and a sequence limitation. Further, the CAFC affirmed the PTAB’s decision that the Petitioner’s references could be combined. However, the CAFC also found that the PTAB failed to properly assess the appellant’s argument regarding a reasonable expectation of success when combining references and therefore vacated the decision and remanded the case so that the Board could make such a determination.

Samsung Electronics, Ltd. (Samsung) filed for inter partes review of claims 1—20 against KEYnetik regarding the ‘106 patent. The patent discloses an invention that “comprises a system, method, and article for processing motion.” 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 gravity from a rest position.” The system also includes an “inference state machine,” which “maintains a sequence of the detected motion conditions, produces a profile description for the sequence of the detected motion, and outputs an event corresponding to the profile description.” 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 appealed the Board’s construction of certain independent claims 1 and 12 terms and the ultimate obviousness determination.

The CAFC Discussion

Claim 1  – Orientation Detection Limitation

Claim 1 required, in part, “a motion detector to detect motion, including identification of a fast motion phase and a slow motion phase, wherein the motion is classified as slow and fast based upon comparing a magnitude of a motion vector with a magnitude of gravity; and an orientation detector to detect orientation towards 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…”

First, KEYnetik and Judge O’Malley in her dissent argued 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 singular without any article in the reference, and the use of the term “orientation condition” in claim 12. The CAFC found, as the Board found, that none of these linguistic arguments supports KEYnetik’s position, nor does the specification. The use of the word “orientation” without an article did not suggest to the Court that the reference is limited to a single orientation. Though KEYnetik noted that examples in the specification showed only one orientation detected during slow motion phases, the CAFC affirmed the Board’s conclusion that 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.

Claim 12 Construction – Sequence Limitation

Independent claim 12 claims “[a]n article for processing motion data” with similar limitations as claim 1. Particularly, the sequence limitation is “an inference state machine . . . configured to: maintain a sequence of the detected orientations towards gravity, each orientation in the sequence being limited to a slow motion phase.” Under the Board’s construction, this limitation did not preclude two or more orientations in the sequence being limited to the same slow motion phase and the inference state machine maintained the sequence for slow motion and does not preclude maintaining orientations for both slow motion and fast motion. KEYnetik and the dissent argued that “[t]he broadest reasonable interpretation of ‘being limited to a slow motion phase’ of the Sequence Limitation requires ‘precluding orientations detected during fast motion’ from being maintained in the claimed sequence.” KEYnetik added 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.”

The CAFC saw 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. The Court agreed with the Board that, under the broadest reasonable interpretation standard, “claim 1 allows continuously maintaining orientations during both fast motion and slow motion phases, provided a sequence of orientations is maintained [i.e., merely consecutive orientations corresponding to slow motions] that is limited to slow motion phases.” Further, the CAFC concluded that claims 1 and 12 use the signal “comprising,” “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.”

Motivation to Combine

KEYnetik next argued that the Board erred in finding a motivation to combine two of the prior art references, Linjama and Tosaki, which the Board relied on in concluding that claims 4, 7, 15, and 18 were invalid. Linjama provides “computer program products . . . to sense orientations or sequence of orientations, i.e. gestures, of mobile devices.” 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.”

The Board found that Samsung provided a motivation to combine Linjama and Tosaki such that Linjama’s gesture 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 result in identification of gestures that the user did not intend . . . [thus making] the combined system more userfriendly.” The Board also cited Samsung’s additional rationale to modify Linjama in light of Tosaki “to save power.”

KEYnetik argued that “Linjama teaches detecting motion AND orientation at the same time, which Tosaki prohibits because it teaches detecting orientation OR movement, but never detects both motion and orientation,” and therefore, the references teach away from each other. However, the CAFC reasoned that KEYnetik provided no rationale as to why a person of ordinary skill would be discouraged from applying Tosaki to Linjama, or that the combination of the two would result in a direction divergent from that taken by the patentee.

Reasonable Expectation of Success

KEYnetik maintained that “the Board erred in concluding that Samsung met its burden in showing that a [person of ordinary skill in the art] would . . . have a reasonable expectation of success in combining Linjama and Tosaki.” KEYnetik specifically said that the Board committed legal error in stating that “Petitioner has no such ‘burden’ to show that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the references.” The CAFC agreed with KEYnetik and remanded 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. Ultimately, the CAFC found that the Board erred in assigning no burden to Samsung and making no finding as to reasonable expectation of success in combining the contested references.

 

The Author

La'Cee Conley

La'Cee Conley is an experienced international intellectual property attorney and owner of Conley Consulting & Portfolio Advisors. After earning Bachelor degrees in physical chemistry and in neuroscience, she earned her Juris Doctor and Master of Law at Drake University, specializing in international intellectual property and international law. She completed her Master of Business Administration at Iowa State University. She currently specializes in patents, trademarks, and copyrights around the world relating to chemical, nanochemical, small molecule, biological, neurological, pharmaceutical, oil & gas, and general mechanical applications.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 22 Comments comments. Join the discussion.

  1. AAA JJ January 29, 2021 8:56 am

    I have yet to read any PTAB decision where the APJ’s demonstrate that they understand the burden of proof on the question of reasonable expectation of success.

  2. AAA JJ January 29, 2021 8:57 am

    And how much do you want to bet that on remand the APJ’s “find” that the patentee hasn’t provided any evidence of a lack of reasonable expectation of success?

  3. ipguy February 2, 2021 10:11 pm

    Oh, don’t get me started on an APJ’s lack of understanding. I’ve had a PTAB judge claim that KSR expanded the analogous art test to be that a prior art reference is analogous if it is reasonably pertinent to any problem with which ONE OF ORDINARY SKILL is concerned. What the heck?!?!?

    And don’t get me started on how PTAB judges don’t seem to understand the concept that, although the absence of specific findings on the level of skill in the art doesn’t give rise to reversible error where the prior art itself reflects an appropriate level of skill, Examiners still need to prove that the prior art reflects an appropriate level of skill in the art. Of course, how an Examiner would ever actually do this is unclear since the USPTO has NEVER set forth any specific analysis for how an Examiner can demonstrate the prior art reflects an appropriate level of skill.

  4. Anon February 3, 2021 6:44 am

    The concept of “motivation to combine” needs a serious step-back from the as-applied version in which the mere presence of an item (present because it has value being present) provides “the motivation.”

    It is become a hopelessly lost cause attempting to convince anyone that it is not proper to cite the single reference being added to a primary reference for the benefit that the single reference states for its (singular) benefit.

    Quite literally, the ‘logic’ has devolved to “combine anything with anything for any reason.”

    Not in-coincidentally, the rampant lack of understanding of the differences between anticipation and obviousness are reflected with the view that 103 art is merely a collection of separate 102 art that can merely be ‘lumped together’ in what is effectively a new ‘single reference.’

  5. AAA JJ February 3, 2021 9:16 am

    I also see a lot of lack of reasonable expectation of success arguments dismissed, by examiners and APJ’s, with the “don’t have to be physically combinable” form paragraph. Of course that completely ignores KSR’s directive that the modification/combination has to result in the elements arranged as recited in the claim. And it’s a complete dodge. If you can’t answer the substance of applicant’s argument with anything other than a form paragraph, you shouldn’t be affirming.

  6. ipguy February 3, 2021 2:33 pm

    Ah, yes. The “doesn’t have to be physically combined” red herring. Right up there with “Applicant is attacking the references individually.”
    With regard to “expectation of success,” the argument seems to fair better in Biotech-related applications than in electrical or mechanical applications since functional and structural components are generally expected to work in combination. However, even in electrical or mechanical cases, one could argue “no expectation of success” where one can show that the COMBINED teachings of the individual references teach away from the claimed device (basically, the Examiner can’t cherry-pick certain features from the references while ignoring the other features of that reference that would modify the primary reference away from the claimed invention).

  7. Anon February 3, 2021 4:41 pm

    ipguy,

    That’s the route I usually go – especially if the reference itself teaches as to requiring of certain items, or being applied in a certain context.

    Traveling right now, so I have to paraphrase, but basically, “the combination cannot destroy the mode of operation as taught by the reference.”

    Note that this is NOT the same as “teaching away.”

  8. AAA JJ February 4, 2021 7:54 am

    “…where one can show that the COMBINED teachings of the individual references teach away from the claimed device (basically, the Examiner can’t cherry-pick certain features from the references while ignoring the other features of that reference that would modify the primary reference away from the claimed invention).”

    Whenever I make an argument about a reference that doesn’t include the portions cited by the examiner what I get in response is, “the examiner is only relying on the reference for…”

    Of course it’s legally improper to rely on a reference “only for” a particular disclosure(s).

    What’s more irritating is having an APJ dismiss that argument with, “the examiner is not relying on the reference for that teaching” or some such nonsense. Really disappointing to read that (which I do a lot!) in PTAB decisions from persons of supposed legal competence.

  9. Anon February 4, 2021 10:55 am

    AAA JJ,

    I am not certain whether it was your intent to write so broadly, but I do not see the issue that you (seem to) stress.

    Often applications have many moving parts, and often some of the moving parts are fully capable of being segregated from other portions of what is being taught.

    A blanket statement cannot stand that no such ‘parsing’ is ever not appropriate (whew – lot’s of negatives there). In other words, it is entirely foreseeable that parsing is appropriate, and that it is NOT ALWAYS “legally improper to rely on a reference ‘only for’ a particular disclosure(s).” Some portions MAY be properly set aside – and this would flow from the manner in which the reference is put together.

    My point was more to the particular instances in which referenceS (this applies to as many references as are involved – and thus there is a COMPOUND effect when large quantities of references are merely stockpiled) teach a particular reliance and interaction of certain aspects, and in those cases the particular aspects are cleaved without regard to the effects of what is being taught – across the span of the references attempting to be tossed together.

    NONE of the combination of references may suffer for their taught mode to be contradicted.

    Again, this is NOT a teaching away aspect – this is more in line with an “expected success” aspect. The multiplicity of expected success should be (but often is not) applied committedly for each and every reference when references are combined.

    This is not an overly-restrictive test. Those elements that are truly plug and play, that in effect are more colloquially obvious, will also result in most cases to be legally obvious.

  10. ipguy February 4, 2021 3:01 pm

    @7
    “Note that this is NOT the same as “teaching away.””

    Let me clarify that when I said “teaching away,” I wasn’t using it in the classical sense of “teaching away” but in the sense that the combined teachings of the references would not “teach” the claimed invention, but something other than what is claimed. Apologies for any confusion

  11. AAA JJ February 4, 2021 3:27 pm

    No argument about any applied reference can be dismissed with “the examiner is not relying on that portion.” Regardless of whether applicant is arguing against reason to combine and/or reasonable expectation of success. The entire reference is fair game for applicant to argue for anything and everything it discloses, teaches, suggests, etc. If the portion the examiner cites/relies on as evidence to support the rejection is within the knowledge of ordinary skill in the art, then so is any and all portions that applicant argues cuts against the rejection.

  12. ipguy February 4, 2021 3:29 pm

    @8
    “Really disappointing to read that”

    But, sadly, not surprising to read that. PTAB judges that were promoted from the Examining Corps bring their misunderstandings with them.

  13. ipguy February 4, 2021 9:48 pm

    @11 “If the portion the examiner cites/relies on as evidence to support the rejection is within the knowledge of ordinary skill in the art,”

    Technically, since the Examiner fails to explicitly determine the level of ordinary skill in the art, the Examiner should be providing an explicit determination of why the prior art reflect an appropriate level of skill in the art. Again, the USPTO provides Examiners with ZERO training as to how to provide such an analysis.

  14. Anon February 5, 2021 12:08 pm

    Ipguy,

    I have to wonder if there is a case (a la Berkheimer) that brings to bear the necessary (APA level) of satisfying an obviousness rejection in the face of bald conclusory assertions…

    Would be worth exploring in a standard first action reply that has been a product of mere cut-n-paste form paragraphs.

  15. AAA JJ February 5, 2021 2:48 pm

    “Let me clarify that when I said ‘teaching away,’ I wasn’t using it in the classical sense of ‘teaching away’ but in the sense that the combined teachings of the references would not ‘teach’ the claimed invention, but something other than what is claimed.”

    In the rare instances where the APJ’s don’t dismiss an argument like that out of hand, because “the examiner isn’t relying on that portion of the reference,” they “weigh” or “balance” the “teachings” or “suggestions” of the reference(s) that support a determination of non-obviousness against the teachings or suggestions that they believe support a determination of obviousness, and somehow, almost miraculously, the “weighing” or “balancing” always comes out in favor of obviousness.

  16. ipguy February 5, 2021 5:56 pm

    @14

    I always challenge skill level determination when I receive 103 rejections. Examiners either ignore it (which violates the rule that they must give a substantive response to each of Applicant’s arguments) or they cite portions of the MPEP relating to skill level determination without any accompanying analysis or rebuttal.
    At the very least, it gives Examiners pause because they generally have on idea how to respond, and it’s an issue that I would love to get before the PTAB (who likely won’t know how to respond to it either since I include the Ex parte Jud case (informative case) as part of my analysis).

  17. ipguy February 5, 2021 6:04 pm

    @15

    I haven’t gone to appeal in a long time, but 1.132 Affidavits/Declarations might add some “weight” in your favor. While it’s been some time since I’ve had to appeal to the PTAB, in my review of PTAB cases over the years, a 1.132 from the inventor seems to push the analysis away from “Examiner said/Attorney said” balancing to “Did the Examiner rebut the Inventor’s/Person of Ordinary Skill’s evidence?”.

  18. Anon February 6, 2021 8:24 am

    Ipguy,

    I hear you, but would add a note of caution in that an inventor is NOT the legal fiction of a Person of Ordinary Skill In The Art.

  19. Anon February 6, 2021 8:25 am

    … in fact, it is semantically dangerous to make that assertion, for if that assertion were to stand, than ANY action by the inventor would be – by definition – only be the work of PHOSITA.

  20. ipguy February 7, 2021 4:27 pm

    @18, 19

    Check out Ex Parte Jud, a designated Informative Decision that discusses the level of ordinary skill.
    https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/rh061061.pdf

    I don’t equate the inventor with the person of ordinary skill. However, the inventor can opine on what a person of ordinary skill would or would not know, based upon the inventor’s background, experience, etc. The inventor is most always in a better place to opine on what a person of ordinary skill would or would not know than the Examiner (who generally has only a BS degree in a field of engineering with, at best, several years of experience in a field other than the field of the application). Most Examiners could not articulate the level of ordinary skill to save their life.

  21. Anon February 8, 2021 1:42 pm

    Thanks ipguy – that is an interesting read.

  22. ipguy February 9, 2021 4:34 pm

    @21

    Bear in mind that Ex Parte Jud is the PTAB/USPTO’s take on skill level determination. It should NOT be taken as the CAFC’s or even the SCOTUS’ view on the matter.

    There is a lot about skill level determination that the USPTO get’s wrong or twists out of context.

    Imagine a world where you had a basis for denying an Examiner use of a particular reference simply because that reference was not within the level of ordinary skill. Imagine a world where Examiners had to explicitly state what they believed to be the level of ordinary skill. That world you just imagined is the stuff of nightmares for USPTO management.

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