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

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.