Board IPR FWD remanded regarding reasonable expectation of success

KeyNetik, Inc. v. Samsung Electronics Co., Ltd.

Docket No. 2020-1271 (IPR2018-00986) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1271.OPINION.1-27-2021_1723945.pdf)

DYK, CLEVENGER, O’MALLEY

January 27, 2021 (Non-Precedential)

Brief Summary:  IPR final written decision remanded for finding on reasonable expectation of success (“The Board erred in assigning no burden to Samsung and making no finding as to a reasonable expectation of success in combining the contested references.”) Summary:  KEYnetic appealed IPR final written decision (FWD) holding claims 1-20 of US 8,370,106 relating to motion detection systems unpatentable as obvious.  The FC panel affirmed the Board’s finding of a motivation to combine the prior art but remanded the question of a reasonable expectation of success.  KEYnetik challenged the Board’s construction (broadest reasonable construction) of the “orientation detector limitation” and the “sequence limitation”, but the FC panel found no error with it (“use of the word ‘orientation’ without an article does not suggest that the reference is limited to a single orientation”, “Board’s construction is consistent with the ordinary English usage of the term ‘each’…made clear by the more general definitions in the Oxford English Dictionary”, the claims “use the signal ‘comprising’…which means that the named elements are essential, but other elements may be added” (Genentech, FC 1997), prosecution history does not show “clear disclaimer of claim scope”).  KEYnetik also argued that the Board erred in finding a motivation to combine two of the prior art references (Tosaki and Linjama) as “the references teach away from each other”, but the FC panel disagreed because KEYnetik provided “no rationale as to why a [POSA] would be discouraged from applying” the references “or that the combination of the two would result in a direction divergent from that taken by the patentee” (In re Gurley, FC 1994).   KEYnetik also argued the Board erred in finding a reasonable expectation of success in combining the references in stating “Petitioner has no such ‘burden’ to show that a POSITA would have a reasonable expectation of success in combining the references.”  The FC panel agreed with KEYnetik, explaining that “[i]t was Samsung’s ‘burden’ to demonstrate” the reasonable expectation of success and remanded the decision on this point (Artic Cat, FC 2017; Intell. BioSys., FC 2016) (“The Board erred in assigning no burden to Samsung and making no finding as to reasonable expectation of success in combining the contested references.”)  Judge O’Malley’s dissent did not dispute the majority’s reasonable expectation of success finding but disagreed with the claim construction findings (e.g., “the claim language supports KEYnetik’s view that a single orientation is detected for each slow motion phase” (Harari, FC 2011 (“use of both singular and plural language in the claims suggests the single use carried only a singular meaning”)).