Wildcat Licensing Wi LLC v. Atlas Copco Tools

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WILDCAT LICENSING WI LLC,
Appellant
v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS
LLC, GENERAL MOTORS LLC, FAURECIA
AUTOMOTIVE SEATING, LLC, MAGNA
INTERNATIONAL INC.,
Appellees
______________________
2022-1303, 2022-1304
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00891, IPR2020-00892.
______________________
Decided: January 9, 2024
______________________
MEREDITH MARTIN A DDY , AddyHart P.C., Atlanta, GA,
argued for appellant. Also represented by BRANDON C.
HELMS , BENJAMIN C APPEL , ROBERT P ATRICK HART , Chi-
cago, IL; J EFFREY SALMON, Jeffrey W. Salmon Law LLC,
Glenview, IL; BRAD M. SCHELLER , P ETER F. SNELL , Mintz,
Levin, Cohn, Ferris, Glovsky and Popeo, P.C., New York,
NY.
Case: 22-1303 Document: 72 Page: 1 Filed: 01/09/2024

-- 1 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
2
BENJAMIN L EE K IERSZ, Pillsbury Winthrop Shaw
Pittman LLP, McLean, VA, argued for all appellees. Ap-
pellee Atlas Copco Tools and Assembly Systems LLC also
represented by WILLIAM ATKINS .
J OSEPH HERRIGES , J R., Fish & Richardson PC, Minne-
apolis, MN, for appellee General Motors LLC. Also repre-
sented by N ITIKA G UPTA F IORELLA, Wilmington, DE.
D EBORAH P OLLACK-M ILGATE, Barnes & Thornburg
LLP, Indianapolis, IN, for appellee Faurecia Automotive
Seating, LLC. Also represented by CHAD S.C. STOVER , Wil-
mington, DE.
STEPHANIE P. K OH , Sidley Austin LLP, Chicago, IL, for
appellee Magna International Inc. Also represented by
N ATHANIEL C. L OVE; SCOTT B ORDER, Winston & Strawn
LLP, Washington, DC.
______________________
Before REYNA, T ARANTO, and STARK, Circuit Judges.
REYNA, Circuit Judge.
Appellant Wildcat Licensing WI LLC appeals two final
written decisions issued in related inter partes review pro-
ceedings. In those proceedings, the United States Patent
Trial and Appeal Board concluded that the challenged
claims were unpatentable as obvious. Wildcat contends
that the Board erred by considering arguments and evi-
dence not included in the initial inter partes review peti-
tions, and by finding that the prior art disclosed all of the
challenged claim limitations. Wildcat also contends that
the Board improperly precluded it from entering certain ev-
idence when it denied a set of Wildcat’s discovery motions.
We affirm.
Case: 22-1303 Document: 72 Page: 2 Filed: 01/09/2024

-- 2 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
3
BACKGROUND
Wildcat owns U.S. Patent Nos. RE47,220 (the “’220 pa-
tent) and RE47,232 (the “’232 patent”). The challenged pa-
tents involve systems and methods for a fastening tool that
employs preprogrammed torque values. See, e.g., ’220 pa-
tent, Abstract, 1:47–55.1 The claimed systems thus ensure
an operator can fasten each fastener (e.g., bolt or screw)
into position at the correct torque value. Id.
All of the challenged claims include “Claimed Torque
Requirements.” The Claimed Torque Requirements are re-
cited in Claim 31 of the ’220 patent, which Wildcat agrees
is representative of the challenged claims. Appellant
Br. 18. Namely, the claimed system must (1) measure the
torque applied to the fastener at first and second fastening
locations; (2) store “first and second predetermined torque
values” in memory; and (3) compare the measured torque
at each fastening location to the corresponding predeter-
mined torque value that was stored in memory. See ’220
patent, 14:25–64.
1 Both parties predominantly cite to the ’220 patent
and the underlying proceedings involving that patent, not-
ing that the proceedings for the ’220 and ’232 patents both
“contain[ed] the same evidence.” Appellant Br. 5 n.4; Ap-
pellee Br. 4 n.1. We do the same.
Case: 22-1303 Document: 72 Page: 3 Filed: 01/09/2024

-- 3 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
4
Central to this appeal is one prior art reference: an ar-
ticle in a December 1993 IBM Technical Disclosure Bulle-
tin, titled “Three Dimensional Tooling Position Sensing”
(“IBM”). See J.A. 292–98. IBM includes one figure depict-
ing its disclosed system.
J.A. 297. IBM discloses an electronic torque driver [11]
linked to a microcontroller circuit [6]. J.A. 298. IBM states
that the microcontroller circuit [6] can “enable/disable the
power to the torque driver [11]” and “sense[s] when correct
torque is achieved by linking into a hall effect sensor in the
driver 11.” Id. The “controller may be programmed” such
that an operator must “wait for the set torque to be
achieved on each screw before moving onto the next screw.”
Id.
Case: 22-1303 Document: 72 Page: 4 Filed: 01/09/2024

-- 4 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
5
In May 2020, Appellees (collectively referred to herein
as “Atlas”) filed two petitions for inter partes review (“IPR”)
of claims 31–55 of the ’220 patent and claims 26–49 of
the ’232 patent (collectively, the “challenged claims”). At-
las Copco Tools and Assembly Sys. LLC v. Wildcat Licens-
ing WI LLC, No. IPR2020-00891, 2021 WL 5200230, at *1
(P.T.A.B. Nov. 1, 2021) (“Final Decision”); Atlas Copco
Tools and Assembly Sys. LLC v. Wildcat Licensing WI LLC,
No. IPR2020-00892, 2021 WL 5203286, at *1 (P.T.A.B.
Nov. 1, 2021). Atlas’ petitions asserted that IBM disclosed
the three Claimed Torque Requirements of measuring,
storing, and comparing torque values. Regarding the
“measuring” torque requirement, Atlas argued that IBM’s
hall effect sensor measures torque. J.A. 1407. Atlas fur-
ther argued that IBM’s microcontroller disclosed the re-
maining two Claimed Torque Requirements of storing
predetermined torque values and comparing the measured
torque values to the stored predetermined torque values.
J.A. 1406–07.
The Board subsequently instituted IPR on all grounds
raised in the petitions. After institution, the Board re-
solved discovery disputes, received further briefing on the
merits, and held a hearing on the merits. The Board issued
final written decisions finding that IBM discloses the
Claimed Torque Requirements and concluding that all of
the challenged claims were unpatentable as obvious. Final
Decision, 2021 WL 5200230, at *1, *21.
Wildcat appeals, making three principal arguments.
First, Wildcat asserts that the Board erred by relying on
evidence and argument that were first introduced in Atlas’
IPR reply briefs. Second, Wildcat argues that IBM does not
disclose the Claimed Torque Requirements. Finally, Wild-
cat argues that the Board improperly denied a set of Wild-
cat’s motions for discovery and, as a result, erroneously
precluded Wildcat from presenting evidence in support of
its positions. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
Case: 22-1303 Document: 72 Page: 5 Filed: 01/09/2024

-- 5 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
6
STANDARD OF REVIEW
We review decisions related to compliance with Board
procedures for an abuse of discretion. Ericsson Inc. v. In-
tell. Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018);
see also Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th
1376, 1382 (Fed. Cir. 2023). Resolution of discovery mo-
tions and challenges to the responsiveness of a petitioner’s
post-petition argument and evidence involve compliance
with Board procedures. 37 C.F.R. §§ 42.23, 42.52; see Er-
icsson, 901 F.3d at 1379; Wi-Fi One, LLC v. Broadcom
Corp., 887 F.3d 1329, 1339 (Fed. Cir. 2018). Whether post-
petition argument and evidence presents a new invalidity
theory implicates the Board’s statutory authority and is
subject to de novo review. Corephotonics, Ltd. v. Apple Inc.,
84 F.4th 990, 1008 (Fed. Cir. 2023).
Obviousness is a question of law that we review de
novo, with underlying factual issues that we review for
substantial evidence. ACCO Brands Corp. v. Fellowes,
Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). Factual issues
include 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); Graham v. John Deere Co. of Kan-
sas City, 383 U.S. 1, 17–18 (1966)). Substantial evidence is
such evidence that a reasonable mind might consider ade-
quate to support the Board’s conclusion. In re Applied Ma-
terials, Inc., 692 F.3d 1289, 1294 (Fed. Cir. 2012).
D ISCUSSION
I. Atlas’ Reply Briefs
We first consider Wildcat’s claim that the Board im-
properly relied on certain testimony and evidence asserted
by Atlas after it had filed its IPR petitions. In particular,
Wildcat argues that Atlas presented new invalidity
Case: 22-1303 Document: 72 Page: 6 Filed: 01/09/2024

-- 6 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
7
theories and related evidence in its reply briefs. See Appel-
lant Br. 40–41, 47–48; Reply Br. 16–19. We disagree with
Wildcat.
It is well-established that the scope of an IPR is limited
to the grounds set forth in the initial petition, 35 U.S.C.
§ 312(a)(3), making it improper for the Board to deviate
from the grounds in the petition and consider late-raised
theories of unpatentability. Corephotonics, 84 F.4th
at 1002. But we have held that a petitioner’s reply brief
may not present a new theory of unpatentability in certain
circumstances where the reply brief asserts that the chal-
lenged claims would have been obvious over the same com-
bination of prior art identified in the petition. Apple Inc. v.
Andrea Elecs. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020). In
particular, we held a prior art theory in a reply brief was
not new where the same aspects of the same prior art ref-
erences were used to support the same invalidity argument
made in its petition. Id.; see Corephotonics, 84 F.4th
at 1009. Beyond the restriction that a reply brief must
avoid introducing a new ground, which is a statutory con-
straint, a reply brief is subject to a second, separate re-
striction relating to compliance with Board procedures: a
reply brief is limited to material that is responsive to the
patent owner’s arguments. Corephotonics, 84 F.4th
at 1008.
Atlas asserted in its petitions that IBM’s hall effect
sensor “measures” torque. J.A. 1407. Wildcat responded
that a hall effect sensor alone cannot measure torque. See
Final Decision, 2021 WL 5200230, at *16. In its reply
briefs, Atlas cited deposition testimony of its expert, Dr.
Gregory Davis. J.A. 980–81. Dr. Davis clarified that a per-
son of ordinary skill in the art would consider IBM’s hall
effect sensor to collect the data necessary to measure
torque and thus form part of a torque transducer that can
actually output a measured torque value. See J.A. 2487
(103:9–10). Atlas also introduced additional prior art
Case: 22-1303 Document: 72 Page: 7 Filed: 01/09/2024

-- 7 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
8
references regarding hall effect sensors’ use in the meas-
urement of torque. See J.A. 976.
As in Apple, Atlas’ reply briefs did not introduce evi-
dence involving a new theory, but merely confirmed Atlas’
assertions in its petitions concerning the functionality of a
hall effect sensor. See Rembrandt Diagnostics, 76 F.4th
at 1382. Moreover, Atlas’ citation to new prior art refer-
ences was made in response to Wildcat’s arguments on that
point, to show “the knowledge that a skilled artisan would
bring to bear” in reading the same aspects of the same ref-
erences that were the focus of the petition. Anacor
Pharms., Inc v. Iancu, 889 F.3d 1372, 1381 (Fed. Cir. 2018).
Under these circumstances, we cannot say that Atlas
presented evidence or arguments in support of a shifting or
new invalidity theory or went beyond responding to Wild-
cat’s arguments. See Apple, 949 F.3d at 706. We hold
therefore that the Board did not abuse its discretion by con-
sidering the evidence and arguments raised in Atlas’ reply
briefs.
II. Claimed Torque Requirements
We next address the Board’s findings that IBM dis-
closed each of the three Claimed Torque Requirements, be-
ginning with the “measuring” requirement.
First, Wildcat argues that the “measuring” torque re-
quirement is not disclosed by IBM. It asserts that IBM
teaches the use of a mechanical, clutch-controlled tool that
does not measure torque at all. See Final Decision, 2021
WL 5200230, at *16–17. Under Wildcat’s interpretation,
this clutch-controlled tool simply relies on a compression
spring that causes the clutch to mechanically disengage
when the fastening tool has approximately reached a pre-
set torque. The Board rejected Wildcat’s view and deter-
mined that IBM teaches the “measuring” torque limitation.
The Board’s determination that IBM teaches the
“measuring” torque limitation is supported by substantial
Case: 22-1303 Document: 72 Page: 8 Filed: 01/09/2024

-- 8 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
9
evidence, including IBM’s disclosure and Atlas’ expert’s
testimony. As the Board explains, IBM discloses “a screw
torque sequence verification system.” Final Decision, 2021
WL 5200230, at *20 (quoting IBM, J.A. 298). IBM provides
that “[t]he problem is to ensure” a series of screws “are
tightened to a specific torque in a specific sequence.”
J.A. 298. IBM describes using a microcontroller “to sense
when correct torque is achieved by linking into a hall effect
sensor in the driver 11.” Id. This is depicted in IBM’s sin-
gle image, reproduced above, showing a dotted line labeled
“TORQUE” with an arrow pointing into microcontroller 6.
J.A. 297. Once the microcontroller is properly pro-
grammed, IBM states that an operator must “wait for the
set torque to be achieved on each screw before moving onto
the next screw.” J.A. 298.
The Board credited Dr. Davis’ opinion that IBM’s dis-
closure of a microcontroller linked to a hall effect sensor
supports that IBM’s system performs an electronic meas-
urement of torque, rather than simply being a mechanical,
clutch-controlled system. See Final Decision, 2021
WL 5200230, at *21 (citing, among other testimony,
J.A. 2489–90 (105:10–106:23)). Dr. Davis opined that a mi-
crocontroller is “capable of making decisions” and “compar-
isons with sensed data,” allowing it to “do a more
intelligent job of controlling” than could be done by an im-
precise mechanical tool. J.A. 2489 (105:17–21). Dr. Davis’
testimony and IBM’s disclosure, including its references to
sensing a “correct torque” and achieving a “set torque” at a
particular fastening location, support the Board’s conclu-
sion that IBM teaches more than simply mechanically dis-
engaging when the same torque has been reached for any
fastener. We hold that the Board’s determination that IBM
teaches “measuring” torque is supported by substantial ev-
idence.
Second, Wildcat argues that the Board’s finding that
IBM’s discussion of “set torque” discloses the claimed re-
quirement of storing first and second predetermined torque
Case: 22-1303 Document: 72 Page: 9 Filed: 01/09/2024

-- 9 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
10
values in memory is unsupported by substantial evidence.
Appellant Br. 61. Wildcat asserts that IBM teaches a
clutch-controlled tool that has no need for a predetermined
torque value. Id.
We agree with the Board that IBM provides that its
microcontroller [6] may be programed such that an opera-
tor must “wait for the set torque to be achieved to each
screw before moving onto the next screw.” Final Decision,
2021 WL 5200230, at *20; see also J.A. 298. Dr. Davis ex-
plains that a microcontroller with “RAM”—i.e. “random ac-
cess memory” or temporary storage space—allows the
system to “move the decision process in[to] the microcon-
troller to gain precision.” J.A. 2490 (106:6–15). In other
words, the microcontroller is programmed with the “set
torque” so that it is able to confirm that “set torque” has
indeed been reached by the torque driver. We conclude
that the Board’s finding that IBM discloses having the set
torque value stored in order to determine when that set
torque has been reached for a particular screw is supported
by substantial evidence.
Third, Wildcat argues that the Board failed to address
the “comparing” limitation. Appellant Br. 56. We disagree.
The Board discusses the parties’ arguments regarding the
“comparing” limitation and cites to evidence relating to this
limitation. See, e.g., Final Decision, 2021 WL 5200230,
at *17–18. While the Board does not conduct an explicit
analysis of this claim limitation, we may affirm the Board
“if we may reasonably discern that it followed a proper
path, even if that path is less than perfectly clear.” In re
Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (quo-
tations omitted). That is the case here. See J.A. 2488–89
(104:21–105:9); see also Final Decision, 2021 WL 5200230,
at *21 (citing the same passage of Dr. Davis’ testimony).
As Dr. Davis observed, “comparison” is logically necessary
for the system to determine whether the “sensed torque” is
the same as the “set torque.” See J.A. 2484 (100:15–25).
The basis for the Board’s finding that IBM discloses the
Case: 22-1303 Document: 72 Page: 10 Filed: 01/09/2024

-- 10 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
11
“comparing” limitation is reasonably discernable and sup-
ported by substantial evidence.
III. Wildcat’s Discovery Motions
Wildcat contends that the Board’s denial of a set of mo-
tions for discovery was error because it effectively barred
Wildcat from submitting evidence and argument during
the IPR proceedings.
Wildcat moved in each IPR “for Additional Discovery
Under 37 C.F.R. 42.51(b)(2) and for Authorization to Com-
pel Production of Additional Discovery.” J.A. 1160.
Through these motions, Wildcat sought additional discov-
ery from various entities, including Atlas and non-party
entities. See J.A. 1169. Significantly, Wildcat acknowl-
edged that it was “already in possession of most of the re-
quested documents,” J.A. 1168, and even had the
permission of one non-party to use their documents in the
IPR proceedings, J.A. 1169. These documents had been
produced in a co-pending district court litigation under an
operative protective order. J.A. 1168.
The Board denied the motions to compel. J.A. 1024.
Among other factors, the Board determined that Wildcat
had not shown “that it cannot generate equivalent infor-
mation by other means, such as by using the district court’s
protective order to ask the district court to use the docu-
ments requested in the motions and enter only those docu-
ments in these proceedings that tend to show nexus,
commercial success, and copying.” J.A. 1038. Wildcat re-
quested rehearing in both proceedings to allow discovery.
J.A. 1014. The Board denied the requests. J.A. 787.
We are not persuaded by Wildcat’s assertions. Wildcat
was not precluded from seeking permission from the dis-
trict court to submit documents available to it under a gov-
erning protective order in the district court litigation. Nor
did Wildcat ask, outside the context of a motion to compel
discovery, for the Board’s permission to file under seal the
Case: 22-1303 Document: 72 Page: 11 Filed: 01/09/2024

-- 11 of 12 --

WILDCAT LICENSING WI LLC v.
ATLAS COPCO TOOLS AND ASSEMBLY SYSTEMS LLC
12
documents in its possession that were still subject to the
district court’s confidentiality order. Under these circum-
stances, we cannot say that the Board abused its discretion
in its resolution of Wildcat’s discovery motions.
CONCLUSION
We have considered Wildcat’s other arguments and
find them unpersuasive. We hold that the Board did not
abuse its discretion in its consideration of arguments and
evidence submitted after the IPR petitions or in its resolu-
tion of Wildcat’s discovery motions. The Board’s findings
that the prior art disclosed the disputed claim limitations
is supported by substantial evidence. Thus, we affirm the
Board’s final written decisions concluding that claims 31–
55 of the ’220 patent and claims 26–49 of the ’232 patent
were unpatentable as obvious.
AFFIRMED
COSTS
Costs to Appellee.
Case: 22-1303 Document: 72 Page: 12 Filed: 01/09/2024

-- 12 of 12 --