NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

RAMZI KHALIL MAALOUF,

Appellant

v.

MICROSOFT CORPORATION,

Appellee

______________________ 

2022-1164

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2020-

00483.

______________________ 

Decided: February 23, 2023

______________________ 

BRIAN MEDICH, Dunlap Bennett & Ludwig PLLC, 

Washington, DC, argued for appellant. Also represented 

by ROBERT GREENSPOON, Chicago, IL.

 DERRICK WADE TODDY, Klarquist Sparkman, LLP, 

Portland, OR, argued for appellee. Also represented by J.

CHRISTOPHER CARRAWAY, SARAH ELISABETH JELSEMA,

ANDREW M. MASON. 

______________________ 

Case: 22-1164 Document: 41 Page: 1 Filed: 02/23/2023
2 MAALOUF v. MICROSOFT CORPORATION

Before PROST, REYNA, and STARK, Circuit Judges.

STARK, Circuit Judge. 

Ramzi Khalil Maalouf (“Maalouf”) appeals the Patent 

Trial and Appeal Board’s (“Board”) final written decision in 

an inter partes review (“IPR”), finding claims 29 and 37 of 

U.S. Patent No. 9,503,627 B2 (“’627 patent”) unpatentable 

as obvious. Because the Board did not err in its claim construction or ultimate legal conclusion of obviousness, its 

underlying factual findings are supported by substantial 

evidence, and its analysis is sufficient for our review, we 

affirm.

I 

Maalouf is a co-inventor of the ’627 patent, which generally concerns a handle for a handheld terminal, such as 

a mobile phone. Figure 4 of the patent shows an embodiment of the invention, particularly noting the handheld 

terminal (11) and handle (10):

J.A. 43. Figure 3 shows the invention from another angle, 

without the handheld terminal but pointing out the slot 

sliding plate (9), which may be adjusted so the invention 

may hold differently sized mobile phones: 

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MAALOUF v. MICROSOFT CORPORATION 3

J.A. 43.

Claims 29 and 37 are reproduced below:

29. A handheld device to wirelessly operate a camera of a mobile device, wherein the handheld device 

comprises:

a holder that, during use, holds the mobile device; 

and

a handle apparatus coupled to the holder, wherein 

the handle apparatus comprises:

a command key that, during use, is selectable and 

corresponds to a camera feature of the mobile device,

wherein the command key is positioned on the handle apparatus such that a user is able to, with one 

hand, both hold the handle apparatus and select 

the command key;

a wireless interface module that, during use, provides a wireless connection to the mobile device,

wherein remote control of the camera feature of the 

mobile device is provided over the wireless connection; and

a command key module that, during use, provides, 

via the wireless connection, a control command to 

the mobile device such that the control command 

indicates to the mobile device to perform the camera feature, wherein the command key is one of a 

plurality of command keys positioned on the handle apparatus, and wherein each of the plurality of 

Case: 22-1164 Document: 41 Page: 3 Filed: 02/23/2023
4 MAALOUF v. MICROSOFT CORPORATION

command key corresponds to a respective command.

37. The handheld device of claim 29, wherein the 

holder, during use and using the sliding member, 

adjusts to hold mobile phones of various sizes.

J.A. 47 (’627 patent at 7:3-27, 8:21-23).

After reviewing a petition from Microsoft Corporation 

(“Microsoft”), the Board instituted IPR of claims 29 and 37 

on three grounds and, ultimately, issued a final written decision based on those same three grounds, concluding: (1) 

claim 29 would have been obvious in light of U.S. Patent 

Application Publication No. 2013/0005401 (“Rosenhan”); 

(2) claim 37 would have been obvious in light of Rosenhan 

and WIPO Publication No. 2012/096433 (“Kim”); and (3) 

claims 29 and 37 would have both been obvious in light of 

U.S. Patent No. 7,684,694 (“Fromm”), WIPO Publication 

No. 2012/018405 (“Fenton”), and U.S. Patent Application 

Publication No. 2011/0058052 (“Bolton”).

The Board based its decision on the arguments and evidence supplied by the parties, including a declaration from 

Microsoft’s expert, Eric Welch. In connection with the parties’ dispute over the proper construction of the claim term 

“remote control,” the Board did not limit claim 29 to a “nonfixed” implementation during use – in which the mobile device is not held by the invention’s holder. Relatedly, the 

Board found Rosenhan provided remote control via wireless connection as required by claim 29’s remote control element, regardless of whether a fixed or non-fixed 

implementation is utilized. 

The Board further concluded that Kim disclosed a sliding member that adjusts to hold differently sized phones 

and that Microsoft had demonstrated by a preponderance 

of the evidence that a skilled artisan would have had reason to combine Rosenhan and Kim to disclose the limitations recited in claim 37, by modifying Rosenhan’s 

mounting structure to include Kim’s adjustable phone 

Case: 22-1164 Document: 41 Page: 4 Filed: 02/23/2023
MAALOUF v. MICROSOFT CORPORATION 5

mount to accommodate commercially available 

smartphones and their diverse form factors. Finally, the 

Board concluded a skilled artisan would have been motivated to combine Fromm, Fenton, and Bolton such that 

claims 29 and 37 would have been obvious. 

Throughout its analysis, the Board variously summarized Microsoft’s evidence, noted where Maalouf had failed 

to present any contrary evidence and where the Board had 

already rejected Maalouf’s arguments at the institution 

stage, and stated it was crediting Microsoft’s position. 

Maalouf timely appealed the Board’s decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II

We review the Board’s factual findings for substantial 

evidence and its legal conclusions de novo. See Icon Health 

& Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1039 (Fed. 

Cir. 2017). Substantial evidence is “such relevant evidence 

as a reasonable mind might accept as adequate to support 

a conclusion.” Biestek v. Berryhill, 139 S. Ct. 1148, 1154 

(2019). “[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial 

evidence.” Consolo v. Fed. Mar. Comm’n, 383 U.S. 607, 620 

(1966).

We review the Board’s claim construction based on intrinsic evidence de novo. See Intel Corp. v. Qualcomm Inc., 

21 F.4th 801, 808 (Fed. Cir. 2021). We review the Board’s 

obviousness determination de novo and its underlying factual findings, including whether there was a motivation to 

combine, for substantial evidence. See Intelligent Bio-Sys., 

Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. 

Cir. 2016). In addition:

We review the Board’s IPR decisions to ensure that 

they are not arbitrary, capricious, an abuse of discretion, . . . otherwise not in accordance with law 

. . . [or] unsupported by substantial evidence. 

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6 MAALOUF v. MICROSOFT CORPORATION

Critically, in order to allow effective judicial review, . . . the agency is obligated to provide an administrative record showing the evidence on which 

the findings are based, accompanied by the 

agency’s reasoning in reaching its conclusions. . . . 

The Board, as an administrative agency, must articulate logical and rational reasons for [its] decision[ ].

Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 

(Fed. Cir. 2017) (internal quotation marks and citations 

omitted). 

III

Maalouf raises several issues on appeal. We deal with 

each in turn.

A 

First, we reject Maalouf’s Appointments Clause challenge, which seeks vacatur because the Commissioner of 

Patents acted here, rather than the Director of the U.S. Patent and Trademark Office. As Maalouf recognized in his 

Opening Brief, the same issue was presented in a separate 

case, which we have since decided. See Arthrex, Inc. v. 

Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022) (rejecting same argument). Maalouf’s Appointments Clause 

challenge, then, necessarily fails.

B 

Second, and contrary to Maalouf’s arguments, the 

Board did not err by failing to construe “remote control” in

a manner that would limit it to a non-fixed mode, in which 

the invention’s holder does not hold the mobile device. In 

determining that “claim 29 is not limited to a ‘non-fixed’ 

implementation in which the mobile device is not held by 

the holder during use,” the Board correctly focused on the 

claim language itself. J.A. 15. We agree with the Board 

that because the claim recites a holder that holds the mobile device during use, as well as a “wireless interface 

Case: 22-1164 Document: 41 Page: 6 Filed: 02/23/2023
MAALOUF v. MICROSOFT CORPORATION 7

module that, during use, provides a wireless connection to 

the mobile device, wherein remote control of the camera 

feature of the mobile device is provided over the wireless 

connection,” the claim cannot be viewed as limited to a nonfixed implementation during use. See J.A. 47 (’627 patent 

at 7:5-6, 7:14-18). This conclusion is based on the ordinary 

and customary meanings to a skilled artisan of the claim 

terms “during use” and “hold,” meanings that are readily 

apparent and do not require elaborate interpretation. See, 

e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312-15 (Fed. 

Cir. 2005) (en banc). Notably, Maalouf offers no alternative 

interpretation of these terms and no argument directly addressing them. 

Instead, Maalouf asserts that the specification defines 

“remote control” as limited to non-fixed embodiments, 

pointing to this statement in particular: “In certain embodiments, remote control operations can also be performed 

(for example, a non-fixed mode).” J.A. 44 (’627 patent at 

2:31-33). The problem for Maalouf, however, is that this 

statement is self-evidently exemplary and not definitional, 

as it expressly refers only to “certain embodiments” and 

“for example” a non-fixed mode. The Board properly declined to import a portion of an exemplary embodiment 

from the specification into the claim. See, e.g., Phillips., 

415 F.3d at 1323. 

Maalouf’s other purported support for his narrow construction of “remote control” is that, he insists, “remote control” and “wireless connection” must have different 

meanings because they are different terms. Even accepting his reasoning as correct, the Board never construed 

these terms as having the same meaning. Instead, the 

Board simply declined to explicitly construe “remote control,” finding claim 29 was not limited to a non-fixed implementation during use. As Microsoft explains, the patent 

uses “wireless connection” as a mechanism by which to provide “remote control” functionality.

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8 MAALOUF v. MICROSOFT CORPORATION

In any event, even if we were to adopt Maalouf’s narrower understanding of his claims, we would still affirm 

the Board’s determination that claim 29 is obvious. As an 

alternative basis for its conclusion, the Board explained 

that even under Maalouf’s construction, claim 29 is obvious 

in light of Rosenhan, and we agree with this conclusion as 

well. Maalouf contends the Board erred in finding Rosenhan disclosed non-fixed remote control, but the Board’s 

finding is supported by substantial evidence. As the Board 

explained:

Rosenhan explicitly states that “electronic connection interface 118 may comprise a wireless connection (e.g., through Bluetooth, IR, etc.) so that no 

physical electronic connection is needed.” Thus, irrespective of whether the smartphone is connected 

to the handle or not, as long as the smartphone is 

in range of the wireless signal, Rosenhan provides 

remote control of the camera features over the 

wireless connection, as recited in claim limitation 

29.B.3b [(i.e., “wherein remote control of the camera feature of the mobile device is provided over the 

wireless connection . . .”)]. 

J.A. 14 (internal citation omitted), 4 (limitation 29.B.3b).1

C 

Third, the Board did not err in finding claim 37 would 

have been obvious in light of Rosenhan and Kim. The 

Board’s underlying factual findings are supported by substantial evidence, particularly the testimony of Microsoft’s 

expert, Welch. Welch explained: “A POSITA would also be 

motivated to combine Kim’s shaft and mounting structure 

1 Maalouf did not raise his “remote control” claim 

construction argument with respect to claim 37 before the 

Board, and we decline to address it for the first time on appeal. See, e.g., Unwired Planet, LLC v. Google Inc., 841 

F.3d 1376, 1379 n.3 (Fed. Cir. 2016). 

Case: 22-1164 Document: 41 Page: 8 Filed: 02/23/2023
MAALOUF v. MICROSOFT CORPORATION 9

with Rosenhan’s handle to expand the compatibility of 

Rosenhan’s handle to the many different types of mobile 

phones available on the market, thereby expanding the 

commercial application of the handle.” J.A. 849. He further noted: 

In view of Rosenhan’s disclosure of accommodating 

phones with various shapes and sizes, a POSITA 

would have been motivated to replace the mounting structure of Rosenhan with a more flexible 

mount that was capable of being used with a larger 

number of mobile phones having different shapes 

and sizes, a situation specifically identified in 

Rosenhan. 

J.A. 846.

Maalouf faults the Board for relying on Welch’s testimony because, in his view, it is merely conclusory and, 

therefore, inadequate. We do not agree that Welch’s testimony, including the portion we have excerpted above, is 

conclusory. Instead, Welch clearly articulated why a 

skilled artisan would be motivated to combine Rosenhan 

and Kim, providing specific reasoning based on facts in the 

record, logic, and his own expertise. Maalouf’s arguments 

to the contrary are without merit.

D 

Finally, the Board sufficiently articulated its analysis. 

As we have previously stated:

The amount of explanation needed to meet the governing legal standards – to enable judicial review 

and to avoid judicial displacement of agency authority – necessarily depends on context. A brief 

explanation may do all that is needed if, for example, the technology is simple and familiar and the 

prior art is clear in its language and easily understood. On the other hand, complexity or obscurity 

of the technology or prior-art descriptions may well 

make more detailed explanations necessary.

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10 MAALOUF v. MICROSOFT CORPORATION

Pers. Web Techs., 848 F.3d at 994 (citation omitted).

Here, the Board was faced with relatively simple technology and arguments. The Board considered and rejected 

Maalouf’s arguments, while summarizing and accepting 

Microsoft’s arguments and the bases for them. Although a 

more fulsome explanation is always welcome and often necessary, in this case the Board’s analysis is sufficiently discernable for purposes of our review and the strictures of 

administrative law. See generally Bowman Transp., Inc. v. 

Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285 (1974) (noting we may “uphold a decision of less than ideal clarity if 

the agency’s path may reasonably be discerned”).

IV 

We have considered the parties’ additional arguments 

and find them unpersuasive or unnecessary to address.2 

For the foregoing reasons, we affirm the Board’s decision.

AFFIRMED

COSTS

No costs.

2 For example, because we affirm the Board’s decision with respect to grounds 1 (Rosenhan) and 2 (Rosenhan 

and Kim), we need not and do not address ground 3 

(Fromm, Fenton, and Bolton).

Case: 22-1164 Document: 41 Page: 10 Filed: 02/23/2023