N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ PAVO SOLUTIONS LLC, Appellant

v.
KINGSTON TECHNOLOGY COMPANY, INC., Cross

- Appellant

______________________ 2016

- 2209, 2016

- 2328, 2016

- 2391

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board in No s
. IPR2015

- 00149, IPR2015

- 00559.

______________________ Decided: November 6, 2017

______________________ M ATTHEW C ARMINE P HILLIPS , Laurence & Phillips IP Law LLP, Portland, OR, argued for appellant. Also represented by K EVIN B RENT L AURENCE , Alexandria, VA; B ENJAMIN T. W ANG , Russ August & Kabat, Los Angeles, CA.

D AVID M ICHAEL H OFFMAN , Fish & Richardson, P.C., Austin, TX, argued for cross

- appellant. Also represented by M ARIA E LENA S TITELER , Minneapolis, MN; M ARTHAPAVO SOLS

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H OPKINS , C HRISTINE H. Y ANG , Law Offices of S. J. Chri stine Yang, Fountain Valley, CA.

______________________ Before L OURIE , O’M ALLEY , and T ARANTO , Circuit Judges. L OURIE , Circuit Judge

. Pavo Solutions LLC (“Pavo”) appeals from the final written decisions of the U.S. Patent and Trademark Office (“USPTO”) Patent and Trial and Appeal Board ( “the Board”) in two inter partes review (“IPR”) proceedings concluding that claims 8, 9, 11, 12, 14, and 16

– 23 of its U.S. Patent 6,926,544 (“the ’544 patent”) are unpatent able as obvious

. See Kingston Tech. Co. v. CATR Co. , IPR 2015

- 00149, 2016 Pat. App. LEXIS 1666 , at *3 (P.T.A.B. Apr. 14, 2016) (“ ’149 Decision ”) (evaluating claims 8, 11, 12, 16, 18, and 20 ) ; Kingston Tech. Co. v. CATR Co. , IPR 2015

- 00559, 2016 WL 2641477 , at * 1 (P.T.A.B. May 10, 2016) (“ ’559 Decision ”) (evaluating claims 1 , 2, 4, 5, 7, 9 , 13, 14 , 17, 19, and 21

– 24)

. Kin g ston Technology Company (“Kingston”) cross

appeals from the final written decision in the second IPR proceeding concluding that claims 1, 2, 4, 5, 7, 13, and 24 of the ’544 patent are not unpatentable as obvious

. ’559 Decision , 2016 WL 261477, at * 21

. For the reasons that follow , we affirm in part and reverse in part

. B ACKGROUND Pavo owns t he ’54 4 patent , which is directed to a
“ flash memory apparatus” having a “ rotary cover .” ’544 patent col. 2 ll. 24

– 28

. The ’544 patent discusses that the prior art flash memory device s having a Universal Serial Bus (“USB”) port and a separate protective cover suffer from certain disadvantages, such as loosening or mi splacement of the protective cover. Id. co l. 1 ll. 37

– 47 , col. 2 ll. 11

– 21 . The ’544 patent describes a USB memory device having , instead , a rotating cover that is not sep a-PAVO SOLS

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“ form al [ sic ] integ rally with the case 31” or “manufactured in form of a separate element so that the hinge protube rance 33 is assembled by means of an adhesive agent.” Id. col. 3 ll. 20

– 26. The specification also describes that a “‘U’ shaped ” “cover 40” has a “circular hinge hole 41 for recei ving the hinge protuberance 33 formed on the flash memory main body. ” Id. col. 3 ll. 31

– 36. The ’544 patent further describes that a “hooking groove” and a “hooking threshold” can be respectively “ formed on ” the hin ge protuberance and the hinge hole so that the hinge prot uberance and the hinge hole can be “hooked” and not be “easily detached from” each other. Id. col. 3 ll. 36

– 43. T he patent describes that the hinge protuberance can alternatively be “formed on the cover” and the hinge hole can be “formed on the flash memory main body.” Id. col. 4 ll. 26

– 29. Claims 1, 7, 8, and 24 are independent claims , and
c laims 8 and 11 are illustrative of the claims at issue in the main appeal. C laim 8 reads as follows: 8. A f lash memory apparatus comprising: a flash memory main body including a case within which a memory element is mounted, an USB (Universal Serial Bus) terminal piece electrically connected with the memory element and installed at a front end of the case in a projecting ma nner; and a cover including a pair of parallel plate members facing each other and spaced by an interval corresponding to the thickness of the case, the cover having an open front end, a closed rear end and a pair of lateral side openings; the parallel plate members defining an inner space receiving the case and being hinged to the case wherein the USB terminal piece is positioned withinPAVO SOLS

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the inner space of the cover or exposed outside the cover by rotating the cover and case with respect to one another

. Id. col. 5 ll. 41

– 56 (emphasi s added). C laim 8 , along with dependent claims 9, 10, and 16

– 23 , require the cover be “hinged to” the case but do not specify how the cover is so hinged

. A subset of claims that depend from claim 8 include s different claim language further specifying how the cover and the case are hinged together

. Claim 11 reads as follows: 11

. The apparatus according to claim 8 wherein the cover and case are hinged by a hinge prot uberance on at least one side of the case and at least one hinge hole in one of the parallel plate me mbers that receives the hinge protuberance

. Id. col. 6 ll. 5–8 (emphas i s added)

. Claim s 12 –1 5 depend from claim 11. Claim 1 , which is at issue i n the cross
- appeal , as co rrected by the certificate of correction, reads as follows: 1. A flash memory apparatus comprising: a flash memory main body including a re ctangular shaped case within which a memory element is mounted, a USB (Un iversal Serial Bus) terminal piece electr ically connected with the memory element and installed at a front end of the case in a projecting manner, and a hinge protube rance formed on at least one side of the case ; and a cover including a pair of parallel plate members facing each other and spaced b y an interval corresponding to the thickness of the case, the cover having an open frontPAVO SOLS

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end and a closed rear end with a pair of lateral side openings; the parallel plate members having at least one hinge hole receiving the hinge protuberance on the
case for pivoting the case with respect to the flash memory main body, whereby the USB terminal piece is received in an inner space of the cover or exposed outside the
cover. Id. col. 4 ll. 42

– 59 (emphasi s added). Independent claims 7 and 24, also at issue i n the cross
- appeal, include similar language , i.e. , “hinge element formed on at least one side of the case .” Id. col. 5 ll. 28

– 29, col. 6 ll. 52

– 53 (emphasis added)

. Kingston filed two petitions for IPR of the ’544 patent , challenging its claims based on th e following obviousness grounds : (1) claims 1– 3, 7

– 12, and 14

– 24 over U.S. Patent 6,480,390 (“Matsumiya” ) and U.S. Patent 6,829,672 (“Deng”); (2) claims 4

– 6 and 13 over Matsumiya, Deng, and U.S. Patent 6,019,238 (“Kindig”) ; (3 ) claims 1, 2, 4

– 9, 11

– 14, and 16

– 24 over U.S. Patent 6,522,534 (“Wu”) and either U.S. Design Patent D199,589 (“Hoogesteger”) or U.S. Patent 4,854,045 (“Schaub”) ; and (4) claims 3, 6, 10, and 15 over Wu, either Hoogesteger or Schaub , and U.S. Patent 3,407,6 36 (“Kovacevic”)

. J.A. 127 (’149 petition); J.A. 2184 (’559 petition)

. The Board instituted review of claims 1, 2, 7

– 9, 11, 12, 14 , and 16

– 24 over Matsumiya and Deng, claims 4, 5, and 13 over Matsumiya, Deng, and Kindig, and claims 1, 2, 4, 5, 7

– 9, 11

– 14, and 16

– 24 over Wu and Hoogesteger

. ’149 Decision , 2016 Pat. App. LEXIS 1666, at * 5 ; ’559 D ecision , 2016 WL 2641477, at * 2. Kingston , after its notice of
cross
- appeal, no longer challenge s the Board’s decision regarding claims 4, 5, and 13 based on Kindig, which we do not discuss further. Appellee’s Br. 7. A brief description of these references follows:PAVO SOLS

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Matsumiya , entitled “Card

- type Peripheral Device,” is directed to card

- type device s having a housing for a circuit board with a “connector elem ent” and “ openings for expo sing the contact portion.” Matsumiya col. 1 ll. 46

– 54

. Matsumiya discusses that its described invention allow s “shielding [of] the contacts to prevent the accumulation of dust and dirt on the contacts when the device is not in
use. ” Id. col. 1 ll. 41

– 45. Matsumiya discloses various embodiments, including one that employs a “dust proof cover 88 mounted swingably on the outside of the housing 86” as shown below :

Id. fig. 15a , col. 12 ll. 41

– 43

. Deng , entitled “Electronic Flash Memory External Storage Method and Device,” is generally directed to an external data storage device and method employing a “plug

- and

- play” tech nology, such as the USB interface. Deng col. 2 ll. 12

– 15, col. 2 l. 65

– col. 3 l. 1 4. It is undi sputed that Deng does not disclose a cover for the USB terminal

. ’149 Decision , 2016 Pat. App. LEXIS 1666, at
* 37 & n.8

. Wu , entitled “Pen

- type Portable Memory Device,” is directed to a portable memory device including “a cha mber 11,” which holds a memory unit inside, and “a cap member 12,” which is “detachably fitted with the chamber 11” so that the “ USB plug ” can be “well protected from being deformed or damaged” and “the USB plug can still be conveniently plugged in to the computer. ” Wu col. 1 ll. 41

– 46, 50

– 52, col. 2 ll. 30

– 34. Figure 3 of Wu , for exa mple, illustrates its described device :PAVO SOLS

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Id. fig. 3. Hoogesteger, entitled “Hand Magnifier,” is a design patent directed to a magnifier having a swivel cover

. Hoogesteger figs . 1–4. Hoogesteger ’s claimed design i s shown below:

Id. figs . 1– 3. It its final written decisions, the Board determined that claims 8, 9, 11, 12, 14, and 16

– 23 are unpatentable but that claims 1, 2, 4, 5, 7, 13, and 24 are not unpatent able. ’149 Decision , 2016 Pat. App. LEXIS 1666, at * 75 ; ’559 D ecision , 2016 WL 2641477, at * 21

. As relevant onPAVO SOLS

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appeal and cross

- appeal , the Board concluded that : (1) claims 8, 9, and 16

– 23 (“ the ‘ hinged to ’ claims”) , which require the cover to be “hinged to” the case, would have been obvi ous; (2) claims 11, 12, and 14 (“ the ‘ protuberance on’ claims”) , which require a “hinge/hinged protuberance on” the case, would also have been obvi ous; and (3) claims 1, 2, 7, and 24 (“ the ‘ protuberance formed on ’ claims”) , which requi re a “hinge protuberance” or “hinge element” be “formed on” the case, would not have been obvi ous
. Id. As relevant here, t he Board construed “hinge prot uberance,” as a “hinging structure that bulges out, pr otrudes, or projects, beyond the surrounding surf ace,” ’149 Decision , 2016 Pat. App. LEXIS 1666, at * 21 ; ’559 D ec ision , 2016 WL 2641477, at * 4 , and “hinge ele ment ” as “encompass[ing] at least a hing e protuberance and a hinge hole,” ’559 D ecision , 2016 WL 2641477, at * 6

. T he Board rejected the patent owner’s contention that the term “ hinge protuberance” should be understood to “not extend through the case like an axle would , ” ’149 Dec ision , 2016 Pat. App. LEXIS 1666, at * 17

– 20 ; instead, the Board noted that the patent owner’s arguments regarding partic ular hinge structures are better addressed by inte rpreting the terms that follow “hinge protuberance,” i.e. , “on at least one side of the case,” id. at * 20 , and “formed
on at least one side of the case,” see ’559 D ecision , 2016 WL 2641477, at * 6–7. T he Board then drew a distinction between a hinge protuberance “on” at least one side of the case and a protuberance or element “formed on” at least one side of the case. In particular, the Board determined that “on at least one side of the case ” indicat es “ the relative position of the protrusion ” without regard to whether or how the hinge protuberance is attached to the case , ’149 Decision , 2016 Pat. App. LEXIS 1666, at * 30 , but that “formed on at least one side of the case ” indicates “ integration and attach ment of the protrusion or element,” ’559 D ecision , 2016 WL 2641477, at * 7. T he Board stated that “[t]hePAVO SOLS

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phrase ‘formed on’ is narrower than the term ‘on’ ” because of the patentee’s use of different terms in the claims and the use of the word “formed” in describing the embod iments with an attached or integrated hinge protuberance or element

. Id. at * 7. Applying its claim constructions, the Board concluded that the “ protuberance on” claims would have been obv ious over both of the instituted combinati on grounds of (1) Matsumiya and Deng ; and (2) Wu and Hoogesteger, but that the “ protuberance formed on” claims would not have been obvious over either of the combinations. As for the “hinged to” claims, the Board noted that Matsumiya and Hoogesteger disclose the cover being hinged “ in some
manner ” to the case, which m et the claim requirement

. ’149 Decision , 2016 Pat. App. LEXIS 1666, at * 45

. Pavo and Kingston t imely appealed and cross

appealed, respectively. We have jurisdiction pursu ant to 28 U.S. C. § 1295(a)(4)(A)

. D ISCUSSION We review the Board’ s factual findings for substantial evidence and its legal determinations de novo

. PPC Broadband , Inc. v. Corning Optical Commc’ ns RF, LLC , 815 F.3d 747, 751 (Fed. Cir. 2016)

. Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re Gar tside , 203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. v. NLRB , 305 U.S. 197, 229 (1938)). In IPR proceedings, the Board gives claim terms their broadest reasonable interpretation in light of the claim and specification. See Cuozzo Speed Techs., LLC v. Lee , 136 S. Ct. 2131, 2142

– 46 (2016). We review the Board’s ultimate claim constructions de novo and underlying factual d etermination s involving extrinsic evidence for substantial evidence. Microsoft Corp. v. Proxyconn, Inc. , 789 F.3d 1292, 1297 (Fed. Cir. 2015) (citing Teva Pharm. U.S.A., Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 841

– 42 (2015)).PAVO SOLS

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Obviousness is a question of law based on underlying factual findings relating to “the scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any objective indicia of non

- obviousness.” Randall Mfg. v. Re a , 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 406 (2007) and Graha m v. John Deere Co. , 383 U.S. 1, 17

– 18 (1966)). On appeal , Pavo argues that the Board erred in adop ting a con struction of “on” that is broader than that of “formed on ,” and urges that the narrower construction , requiring that the protuberance be attached to or int egrated into the side of the case, should be adopted for both terms . Pavo further argues that the challenged claims are not unpatentable as obvious even under the Board’s claim construction because a person of ordinary skill in the art would not have been motivated to combine or modify the prior art references

. On cross

- appeal, Kin gston argue s the opposite: that the Board erre d in adopting a narrower construction of “formed on” than “on,” that the broader construction , i.e. , that the protuberance need not be attached to or integrated into the side of the case, should be adopted for both terms , and that the challenged claims are unpatentable even under the Board’s claim construction

. We discuss claim construction and obviou sness in turn. I. Claim Construction The claim construction arguments in this appeal and
cross
- appeal both concern two closely related terms, “on” and “formed on,” which we discuss together. Pavo and Kingston seem to agree that “ hinge protuberance on at least one side of the case ” and “hinge protuberance formed
on at least on side of the case ” should be construed in the
same way
. Appellant’ s B r. 41

– 42 ; Appellee’ s Br. 27

– 28

. However, t heir arguments differ with respect to how both of those terms should be interpreted

.PAVO SOLS

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Pavo argues that both “on” and “formed on” require attachment or integration of the protuberance to the case

. Pavo faults the Board for engaging in a “hyper

- linguistic analysis ,” Appellant’s Br. 33, and failing to read the ’544 patent from a skilled artisan’s perspective

. When read properly, Pavo contends, the ’544 patent uses “on” as a “shorter equivalent to ‘ formed on,’ ” Appellant’s Br. 41, and bo th should be interpreted to mean att achment to or integration in to the side of the case , and not be read to include axle

- based hinge design s. As for the “hinged to” claims , Pavo does not argue that the Board erred in its claim construction but co ntends that it erred in concluding that the claims are unpatentable as obvious for other reasons, which we discuss below

. See Oral Argument at 6:51

– 7: 50 , Pavo Sols. LLC v. Kingston Tech. Co. , No s
. 16

- 2209 , - 2328,

- 2391 (Fed. Cir. Oct. 3, 2017), http://oralarguments. cafc.uscourts.gov/default.aspx?fl=2016

- 2209.mp3

. Kingston responds that both “on” and “formed on” merely denote the location of the hinge protuberance as being on the side of the case. Giving the terms their broadest r easonable interpretation as required in IPR proceeding s , Kingston con tends that neither “on” nor “formed on” requires attachment to or integration in to the
case or excludes axle

- based hinge designs

. As an initial matter , we agree with both parties that the Board erred in distinguishing between “on” and “formed on” in the context of the ’544 patent

. As to how they both should be interpreted , w e agree with Pavo that “hinge protuberance on at least one side of the case ” an d “hinge protuberance formed on at least one side of the
case ” both denote that the hinge protuberance is attached to or integrated in to the side of the case

. The Board here erred by parsing the claim language to solely focus on “on” versus “formed on” w ithout regard to the surrounding language in the claim s and the writtenPAVO SOLS

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description of the invention . As a result, the Board reached an unreasonably broad reading of the expression “hinge protuberance on at least one side of the case” to infer a scope distinguishable from that of “hinge prot uberance formed on at least one side of the case” and created a distinction that does not exist in the specific ation, solely because the words “on” and “formed on” are literally different

. As the Boa rd correctly determined when construing “hinge protuberance formed on at least one side of the case,” the specification consistently describes that a “hinge protuberance ,” if it is on the case rather than the
cover , is attached to or integrated in to the si de of the case. See, e.g. , ’544 patent col. 3 ll. 20

– 36

. Similar l y, i f “ hinge protuberance on at least one side of the case ” is properly construed in context , the ’54 4 patent reveals that it does not distinguish “on” and “formed on” when used in the context of the relationship between “ hinge protuberance” and the “ side of the case .” It is particularly notable that in claims 1 and 24, which read “ a hinge protuberance formed on ” and “a hinge element formed on , ” respectively, later refer to the same hinge protuberance or hinge el ement as the one being “on” the case. ’544 patent col. 4 ll. 47

– 48 , 55, col. 6 ll. 52

– 53, 59 . In other words, in the ’544 patent, “on” and “formed on” are used interchangeably in referring to “hinge protuberance” and “hinge element” and how they physically relate to the case . T he literal diffe rence in the claim term s , in the context of its surrounding language and the specification , does not give rise to the substantive distinction the Board found

. We therefore conc lude that the claim terms “ hinge protuberance on at least one side of the case ” and “ hinge protuberan ce formed on at least one side of the case” in the context of the ’54 4 patent both indicate that the hinge protuberance is attached to or integrated in to t he side of the case.PAVO SOLS

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II. Obviousness Pavo argues that neither Matsumiya nor Hoogesteger teaches the claimed hinge design having the protuberance attached to or integrated into the case. Furthermore, Pavo argues that, to the extent that its claim construction argument were to be unsuccessful or inapplicable to the “hinged to” claims, there wa s no motivation to combine or modify the cited references because they tout the benefits of complete dust

- proof cove rage of USB terminals, unlike the flash drive covers in the ’544 patent, and that the Board failed to properly consider its expert testimony to this effect. Kingston responds that even if both “on” and “formed on” are construed to require attachment or int egration of the hinge protuberance to the side of the case, a person of ordinary skill in the art would have modified Matsumiya to implement what was known in the art as a “snap

- on hinge.” Appellee’s Br. 33

– 34. Kingston does not make a similar argument w ith respect to the Hoogesteger refe rence. First, as for the “hinged to” claims at issue on appeal, Pavo does not argue that the Board erred in its claim construction, and its nonobviousness argument solely depends on the alleged lack of motivation to combine or modify the references to implement a less than complete cover for a USB terminal. However, contrary to Pavo’s contention, the Board did consider the lack of motivation argument, and properly reasoned that a less than optimal result from a combinatio n or modification does not nece ssarily defeat a finding of such motivation. ’149 Decision , 2016 Pat. App. LEXIS 1666, at *52

– 56 . We find no error in the Board’s analysis and conclude that claims 8, 9, and 16

– 23 at issue on appeal are unpatentable as obvi ous over Matsumiya in view of Deng

. Applying the correct construction of “hinge protube rance on at least on e side of the case,” we also concludePAVO SOLS

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that the “protuberance on” claims , i.e. , claims 11, 12, and 14, are not unpatentable as obvious over the cited reference because , as the Board found, neither Matsumiya nor Hoogesteger teaches the hinge protuberance attached to or integrated in to the side of the case. See ’559 Decision , 2016 WL 2641477, at * 9– 10, *18

. Although we have found that t he Board erred in the construction of the “protuberance on” claims , we nonetheless determine that remand is not necessary to reapply the claims as correctly construed because the Board’s underlying factual findings supporting nonobviousness of the “protuberance formed on” claims also support the conclusion of nonobviousness of the “protuberance on” claims with equal force. We therefore conclude that claims 11, 12, and 14 are not unpatentable as obvious. As for the “protuberance formed on” claims at issue on
cross
- appeal , w e conclude that the Board did not err in its claim construction and obviousness conclusion s. A pplying the correct claim construction , t he Board determined that the “protuberance formed on” claims are not unpatentable
as obvious because neither Matsumiya nor Hoogesteger teaches the hinge protuberance attached to or integrated in to the side of the case

. ’559 Decision , 2016 WL 2641477, at *9

– 10, *18

. The Board declined to consider Kingston’s “snap

- on hinge” modification argument , noting that Kingston did not argue modification of Matsumiya in its IPR petitions. We find no error in the Board’ s analysis and its underlying factual findings and conclude that claims 1, 2, 4, 5, 7, and 24 at issue on cross

- appeal are not unpatentable as obvious. In sum , claims 1, 2, 7, 11 , 12, 14, and 24 are not u npatentable as obvious over the cited references and claims 8, 9, and 16

– 23 are unpatentable as obvious over Mats umiya in view of Deng

. Because we affirm the Board’s obviousness ruling with respect to those reference s, we do not address the Board’s findings with respect to Hoogesteger and Wu. We do not disturb the Board’sPAVO SOLS

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decision that claims 4, 5, and 13 are not unpatentable as obvious. We have considered the remaining argumen ts but find them unpersuasive. C ONCLUSION For the foregoing reasons , the decisions of the Board
are affirmed in part and reversed in part. AFFIRMED IN PART, REVERSED IN PART C OSTS No costs.