IP Law Daily, PATENT—Fed. Cir.: PTAB properly found that antenna patent claims were obvious, (Jul 15, 2022)

By Kevin M. Finson, J.D.

The Board’s obviousness determination was affirmed because the appellant’s proposed claim construction was not supported by the record.

A maker antennas was unable to show error Patent Trial and Appeals Board decisions finding that the challenges claims in two patents directed to compact antennas were obvious, the U.S. Court of Appeals for the Federal Circuit has held. The construction of the claim term “terminal” advanced by the patentee was not supported by the record, while the Board’s finding that a prior art reference disclosed the terminal limitation was supported by substantial evidence (NuCurrent, Inc. v. Samsung Electronics Co., Ltd., July 14, 2022, Stoll, K.).

NuCurrent, Inc. (NuCurrent) was the owner of U.S. Patents Nos. 9,941,729 and 10,063,100, which were directed at a compact antenna capable of operating at multiple frequency bands. The claimed invention was an antenna with two induction coils that could be connected in different combinations by various terminals. Samsung Electronics Co., Ltd. (Samsung) petitioned for inter partes review of various claims of the ’729 patent and post-grant review of the ’100 patent, asserting that the claims were obvious in light of the prior art. The Board instituted review, and neither party offered constructions for any term during the proceedings. After the Board decided that the claims at issue were unpatentable as obvious and for lack of written description, NuCurrent appealed, arguing that the Board had incorrectly construed the term “terminal.”

Claim construction. NuCurrent argued that the term “terminal” should have been limited to connections between the antenna and external circuitry. The court found no evidence in the record to support this limitation, and found that there was no reason a “terminal” could not encompass a connection to internal circuitry. In addition, even if the court were to adopt NuCurrent’s proposed claim construction, substantial evidence supported the Board’s finding that one of the prior art references teaches the three terminals as claimed. Further, the Board was entitled to rely, as it did, upon the unrebutted testimony of Samsung’s expert that the prior art reference in question taught the three terminals at issue.

The court affirmed the determination of obviousness without reaching the Board’s findings regarding lack of written description.

The case is Nos. 2021-1605, 2021-1606, 2021-1607.

Attorneys: Jon Wright (Sterne, Kessler, Goldstein & Fox PLLC) for NuCurrent Inc. Naveen Modi (Paul Hastings LLP) for Samsung Electronics Co., Ltd.

Companies: NuCurrent Inc.; Samsung Electronics Co., Ltd.

Cases: Patent FedCirNews