IP Law Daily, PATENT—Fed. Cir.: Federal Circuit rejects Apple’s claims on appeal, affirms PTAB decision, (Apr 25, 2023)

By Ursula Furi-Perry, J.D., MBA

The Board did not abuse its discretion, and the court rejected Apple’s argument that the Board’s findings were premised on improper theories.

In a claim filed by Apple for review of a patent owned by another company, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board, which had determined that some claims were shown to be unpatentable while others were not. The circuit court held that the Board did not abuse its discretion, rejecting Apple’s argument that the Board’s findings were premised on improper theories. The court also rejected arguments on cross-appeal that had challenged the Board’s claim construction of several limitations. (Apple Inc. v. UUSI, LLC, April 25, 2023, Prost, S.).

Background. Apple filed two petitions for inter partes review of various claims of U.S. Patent No. 5,796,183, relating to capacitive responsive electronic switching circuits, and owned by Nartron. The Board determined that some claims were shown to be unpatentable while others were not. Apple appealed, specifically regarding three claims which dealt with oscillating voltage, and Nartron cross-appealed.

Claim 37. The court referred to three patents which were relevant to its discussion of Apple’s claims: U.S. Patent No. 4,561,002 (Chiu); U.S. Patent No. 4,418,333 (Schwarzbach); U.S. Patent No. 4,922,061 (Meadows). Apple challenged claim 37 as obvious in view of Chiu and Schwarzbach, but the Board held that the company argued only that Schwarzbach alone taught the limitation of claim 37 requiring “an oscillator voltage . . . greater than a supply voltage.”

The circuit court held that the Board did not abuse its discretion in holding that Apple’s reference did not invoke the downstream 30-volt output voltage of Chiu’s driver circuit 92. While Apple may have made a general argument that Chiu discloses an oscillator voltage greater than the supply voltage, the evidence on which the company relied did not support its argument. “Sure, the Petition invokes Chiu in its discussion of ‘an oscillator voltage . . . greater than a supply voltage,’ but it doesn’t invoke Chiu’s ‘peak voltage of 30 volts’ teaching. Rather, Apple’s Petition invokes Chiu’s ‘output voltage of the signal generator circuitry of the ‘microprocessor 90,’” the federal circuit court explained. “And herein lies Apple’s problem: the ‘output voltage of [Chiu’s] signal generator circuitry’ is not 30 volts.”

Claim 97. Apple then challenged claim 97 as obvious in view of Chiu, Schwarzbach, and Meadows. The Board held that the company failed to prove that an artisan of ordinary skill would have been motivated to combine or reasonably expected success in combining the prior art in the way suggested by Apple. The federal circuit court again sided with the Board, rejecting Apple’s argument that the Board’s findings were premised on an improper bodily-incorporation theory. The Board’s findings were supported by substantial evidence provided by Nartron’s expert, the federal circuit court held.

Cross-appeal. Nartron’s cross-appeal challenged the Board’s claim construction of several limitations, including the “selectively providing” limitation as seen in claim 37; the “closely spaced array” limitation as seen in claim 37; and the “peak voltage” limitation as seen in claim 94. The circuit court again affirmed the Board’s decision, holding that simply because a limitation “encompassed” a particular circumstance did not mean that it was limited to that circumstance.

Therefore, the federal circuit court affirmed the Board’s decisions regarding both Apple’s claims on appeal and Nartron’s cross-appeal.

The Case is No. 21-1035.

Attorneys: Lauren Ann Degnan (Fish & Richardson, P.C.) for Apple Inc. Lawrence Milton Hadley (Glaser Weil Fink Howard Avchen & Shapiro, LLP) for UUSI, LLC d/b/a Nartron.

Companies: Apple Inc.; UUSI, LLC d/b/a Nartron

Cases: Patent FedCirNews