NOTE: This disposition is nonprecedential.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 Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2015-00149, IPR2015-00559.

______________________ 

Decided: November 6, 2017

______________________ 

 MATTHEW CARMINE PHILLIPS, Laurence & Phillips IP 

Law LLP, Portland, OR, argued for appellant. Also 

represented by KEVIN BRENT LAURENCE, Alexandria, VA; 

BENJAMIN T. WANG, Russ August & Kabat, Los Angeles, 

CA.

 DAVID MICHAEL HOFFMAN, Fish & Richardson, P.C., 

Austin, TX, argued for cross-appellant. Also represented 

by MARIA ELENA STITELER, Minneapolis, MN; MARTHA 
2 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

HOPKINS, CHRISTINE H. YANG, Law Offices of S. J. Christine Yang, Fountain Valley, CA.

______________________ 

Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.

LOURIE, 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 unpatentable 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). 

Kingston Technology Company (“Kingston”) crossappeals 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. 

BACKGROUND

Pavo owns the ’544 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 devices having a Universal Serial 

Bus (“USB”) port and a separate protective cover suffer 

from certain disadvantages, such as loosening or misplacement of the protective cover. Id. col. 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 sepa-

4 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

“formal [sic] integrally with the case 31” or “manufactured 

in form of a separate element so that the hinge protuberance 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 receiving 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 hinge 

protuberance and the hinge hole so that the hinge protuberance and the hinge hole can be “hooked” and not be 

“easily detached from” each other. Id. col. 3 ll. 36–43. 

The 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 

claims 8 and 11 are illustrative of the claims at issue in 

the main appeal. Claim 8 reads as follows:

8. A flash 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 manner; 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 within 
PAVO SOLS. LLC v. KINGSTON TECH. CO. 5

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 (emphasis added). Claim 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 includes 

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 protuberance on at least one side of the case and at least 

one hinge hole in one of the parallel plate members that receives the hinge protuberance. 

Id. col. 6 ll. 5–8 (emphasis added). Claims 12–15 

depend from claim 11.

Claim 1, which is at issue in the cross-appeal, as corrected by the certificate of correction, reads as follows:

1. A flash memory apparatus comprising:

a flash memory main body including a rectangular shaped case within which a 

memory element is mounted, a USB (Universal Serial Bus) terminal piece electrically connected with the memory element 

and installed at a front end of the case in a 

projecting manner, and a hinge protuberance formed on at least one side of the case; 

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 
6 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

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 (emphasis added). Independent claims

7 and 24, also at issue in 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 the 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 3,407,636 (“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 Decision, 

2016 WL 2641477, at *2. Kingston, after its notice of

cross-appeal, no longer challenges 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. LLC v. KINGSTON TECH. CO. 7

Matsumiya, entitled “Card-type Peripheral Device,” is 

directed to card-type devices having a housing for a circuit 

board with a “connector element” and “openings for exposing the contact portion.” Matsumiya col. 1 ll. 46–54. 

Matsumiya discusses that its described invention allows 

“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” technology, such as the USB interface. 

Deng col. 2 ll. 12–15, col. 2 l. 65–col. 3 l. 14. It is undisputed 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 chamber 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 example, illustrates its described device: 
8 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

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 is 

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 unpatentable. ’149 Decision, 2016 Pat. App. LEXIS 1666, at *75; 

’559 Decision, 2016 WL 2641477, at *21. As relevant on 
PAVO SOLS. LLC v. KINGSTON TECH. CO. 9

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 obvious; (2) claims 11, 12, and 14 (“the ‘protuberance 

on’ claims”), which require a “hinge/hinged protuberance 

on” the case, would also have been obvious; and (3) claims 

1, 2, 7, and 24 (“the ‘protuberance formed on’ claims”), 

which require a “hinge protuberance” or “hinge element” 

be “formed on” the case, would not have been obvious. Id.

As relevant here, the Board construed “hinge protuberance,” as a “hinging structure that bulges out, protrudes, or projects, beyond the surrounding surface,” ’149 

Decision, 2016 Pat. App. LEXIS 1666, at *21; ’559 Decision, 2016 WL 2641477, at *4, and “hinge element” as 

“encompass[ing] at least a hinge protuberance and a 

hinge hole,” ’559 Decision, 2016 WL 2641477, at *6. The 

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 Decision, 2016 Pat. App. LEXIS 1666, at *17–20; instead, the 

Board noted that the patent owner’s arguments regarding 

particular hinge structures are better addressed by interpreting 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 Decision, 2016 

WL 2641477, at *6–7. 

The 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” indicates “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 

attachment of the protrusion or element,” ’559 Decision, 

2016 WL 2641477, at *7. The Board stated that “[t]he 
10 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

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 embodiments 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 obvious over both of the instituted combination 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 met the claim requirement. 

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

Pavo and Kingston timely appealed and crossappealed, respectively. We have jurisdiction pursuant to 

28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

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 Gartside, 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 determinations 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. LLC v. KINGSTON TECH. CO. 11

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. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing 

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) and 

Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).

On appeal, Pavo argues that the Board erred in adopting a construction of “on” that is broader than that of

“formed on,” and urges that the narrower construction, 

requiring that the protuberance be attached to or integrated 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, Kingston argues the opposite: that the Board erred 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 obviousness 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 Br. 41–42; Appellee’s Br. 27–28. 

However, their arguments differ with respect to how both 

of those terms should be interpreted. 
12 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

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 

both should be interpreted to mean attachment to or 

integration into the side of the case, and not be read to 

include axle-based hinge designs. 

As for the “hinged to” claims, Pavo does not argue 

that the Board erred in its claim construction but contends 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., Nos. 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 reasonable interpretation as required in IPR

proceedings, Kingston contends that neither “on” nor 

“formed on” requires attachment to or integration into 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, we agree with Pavo that 

“hinge protuberance on at least one side of the case” and 

“hinge protuberance formed on at least one side of the 

case” both denote that the hinge protuberance is attached 

to or integrated into the side of the case. 

The Board here erred by parsing the claim language 

to solely focus on “on” versus “formed on” without regard 

to the surrounding language in the claims and the written 
PAVO SOLS. LLC v. KINGSTON TECH. CO. 13

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 protuberance formed on at least one side of the case” and

created a distinction that does not exist in the specification, solely because the words “on” and “formed on” are 

literally different. 

As the Board 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 into the side of the case. 

See, e.g., ’544 patent col. 3 ll. 20–36. Similarly, if “hinge 

protuberance on at least one side of the case” is properly 

construed in context, the ’544 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 element 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. The literal difference in the claim terms, in the context of its surrounding 

language and the specification, does not give rise to the

substantive distinction the Board found. 

We therefore conclude that the claim terms “hinge 

protuberance on at least one side of the case” and “hinge 

protuberance formed on at least one side of the case” in 

the context of the ’544 patent both indicate that the hinge 

protuberance is attached to or integrated into the side of 

the case. 
14 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

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 was no motivation to combine or 

modify the cited references because they tout the benefits 

of complete dust-proof coverage 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 integration 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 with respect to the Hoogesteger reference. 

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 combination or modification does not necessarily 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 obvious over 

Matsumiya in view of Deng. 

Applying the correct construction of “hinge protuberance on at least one side of the case,” we also conclude 
PAVO SOLS. LLC v. KINGSTON TECH. CO. 15

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 into the side of the case. See ’559 Decision, 

2016 WL 2641477, at *9–10, *18. Although we have 

found that the 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, we conclude that the Board did not err in its

claim construction and obviousness conclusions. Applying 

the correct claim construction, the 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 

into 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 unpatentable as obvious over the cited references and claims 

8, 9, and 16–23 are unpatentable as obvious over Matsumiya in view of Deng. Because we affirm the Board’s 

obviousness ruling with respect to those references, we do 

not address the Board’s findings with respect to 

Hoogesteger and Wu. We do not disturb the Board’s 
16 PAVO SOLS. LLC v. KINGSTON TECH. CO. 

decision that claims 4, 5, and 13 are not unpatentable as 

obvious. We have considered the remaining arguments 

but find them unpersuasive.

CONCLUSION

For the foregoing reasons, the decisions of the Board 

are affirmed in part and reversed in part.

AFFIRMED IN PART, REVERSED IN PART

COSTS

No costs.