Koninklijke Philips N.v. v. Quectel Wireless Solutions Co. Ltd.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KONINKLIJKE PHILIPS N.V.,
Appellant
v.
QUECTEL WIRELESS SOLUTIONS CO. LTD.,
Appellee
______________________
2023-1223
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00562.
______________________
Decided: August 6, 2024
______________________
K EVIN M. L ITTMAN, Foley & Lardner LLP, Boston, MA,
argued for appellant. Also represented by J OHN CUSTER,
L UCAS I. SILVA; G EORGE CHRISTOPHER B ECK, Washington,
DC; ELEY T HOMPSON, Chicago, IL.
ROBERT C OURTNEY , Fish & Richardson P.C., Minneap-
olis, MN, argued for appellee. Also represented by P ATRICK
BISENIUS , MICHAEL T IMOTHY HAWKINS ; T HOMAS H. REGER ,
II, Dallas, TX.
______________________
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KONINKLIJKE PHILIPS N.V. v.
QUECTEL WIRELESS SOLUTIONS CO. LTD.
2
Before M OORE, Chief Judge, P ROST , Circuit Judge, and
MAZZANT , District Judge.1
Opinion for the court filed by Chief Judge MOORE.
Circuit Judge P ROST concurs in the result.
MOORE, Chief Judge.
Koninklijke Philips N.V. (Philips) appeals an inter
partes review final written decision of the Patent Trial and
Appeal Board (Board) holding claims 1–13 and 27–33 of
U.S. Patent No. 10,257,814 are unpatentable under 35
U.S.C. § 103. We affirm.
BACKGROUND
The Universal Mobile Telecommunications System
(UMTS) is a cellular system standardized by the 3rd Gen-
eration Partnership Project (3GPP). J.A. 1563 ¶ 38. High-
Speed Downlink Packet Access (HSDPA) is a functionality
that allows UMTS to support higher data transfer capabil-
ity on the “downlink,” when a terminal (e.g., a cell phone)
receives a transmission (e.g., voice data) from a base sta-
tion (e.g., a satellite). J.A. 2500 ¶ 28. In an HSDPA sys-
tem, available transmission resources are assigned codes
that are communicated via control channels. ’814 patent
at 1:12–16. Each terminal is assigned a single contiguous
block of codes (called spreading codes). Id. at 1:16–19. Be-
fore starting a transmission, a base station sends a signal
to each terminal communicating which spreading codes are
assigned to that terminal. Id. at 1:23–25. Each terminal
monitors four control channels for receipt of this infor-
mation. Id. at 1:33–36. These signals create potentially
1 Honorable Amos L. Mazzant, III, District Judge,
United States District Court for the Eastern District of
Texas, sitting by designation.
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significant signaling overhead in the system. Id. at 1:41–
43.
The ’814 patent aims to reduce signaling overhead in
an HSDPA system. Id. at 1:47–49. By preconfiguring pa-
rameters such as the starting point for a terminal’s as-
signed resource block, fewer signaling bits are required to
assign transmission resources. Id. at 2:55–64. Claim 1 re-
cites:
1. A method of indicating, to a secondary station, a set
of at least one transmission resource from among a
plurality of transmission resources, said indicated
set of at least one transmission resource being de-
scribed by a plurality of parameters, said method
comprising:
preconfiguring, at the secondary station, at least
one association between a control signalling chan-
nel selected from among a plurality of control sig-
nalling channels, and a value of at least one fixed
parameter describing the indicated set of at least
one transmission resource;
coding into an address at least one remaining dy-
namic parameter from the plurality of parameters
describing the indicated set of at least one trans-
mission resource; and
transmitting the address, to the secondary station,
using the selected control signalling channel.
Id. at 6:40–56.
Quectel Wireless Solutions Co. Ltd. (Quectel) peti-
tioned for inter partes review of claims 1–13 and 27–33 of
the ’814 patent, asserting two grounds of unpatentability.
Specifically, Quectel argued claims 1–13 and 27–33 would
have been obvious over U.S. Patent Application Publication
No. 2003/0147371 (Choi) and U.S. Patent No. 7,801,087
(Gollamudi), and claims 4 and 30 would have been obvious
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KONINKLIJKE PHILIPS N.V. v.
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over Choi, Gollamudi, and U.S. Patent Application Publi-
cation No. 2005/0105487 (Rudolf). The Board instituted
and held all challenged claims unpatentable based on both
asserted grounds. Philips appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Obviousness is a question of law based on underlying
facts. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326 (Fed.
Cir. 2016). We review the Board’s ultimate determination
of obviousness de novo and its underlying findings of fact
for substantial evidence. Pers. Web Techs., LLC v. Apple,
Inc., 848 F.3d 987, 991 (Fed. Cir. 2017).
I. Motivation to Combine
Whether a skilled artisan would have been motivated
to combine prior art references is a question of fact. Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364
(Fed. Cir. 2015). “A finding is supported by substantial ev-
idence if a reasonable mind might accept the evidence as
adequate to support the finding.” Henny Penny Corp. v.
Frymaster LLC, 938 F.3d 1324, 1330 (Fed. Cir. 2019).
Philips challenges the Board’s determination that
claims 1–13 and 27–33 would have been obvious over Choi
and Gollamudi. Philips argues substantial evidence does
not support the Board’s finding that a skilled artisan would
be motivated to combine Choi and Gollamudi.
In its petition, Quectel presented three example imple-
mentations to illustrate the proposed Choi-Gollamudi com-
bination. The Board found a skilled artisan would have
been motivated to combine Choi and Gollamudi as de-
scribed in all three implementations.
Quectel’s brief indicates that affirmance of the Board’s
finding of motivation to combine for any one of the example
implementations should result in affirmance in full.
Philips’ briefs do not dispute this. At oral argument,
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Philips stated the three implementations are indeed inde-
pendent bases for affirmance. Oral Arg. at 1:15–1:35,
https://oralarguments.cafc.uscourts.gov/default.aspx
?fl=23-1223_07102024.mp3. Surprisingly, Quectel then
stated remand would be necessary as to certain dependent
claims if the first implementation was found to be unsup-
ported by substantial evidence. Id. at 16:16–17:13. During
rebuttal, Philips was unable to give a definitive answer on
the issue, as the focus of the appeal was independent claim
1 and the parties had never, up to that point, disputed the
issue. In letters submitted after oral argument, both par-
ties acknowledged the Board’s obviousness analysis for de-
pendent claim 7 rested solely on the first example
implementation.
Despite this colloquy, we decline to decide issues not
properly raised and briefed on appeal. Absent exceptional
circumstances, arguments not raised in an appellant’s
opening brief are waived. Bozeman Fin. LLC v. Fed. Rsrv.
Bank of Atlanta, 955 F.3d 971, 974 (Fed. Cir. 2020). Philips
does not argue in its opening brief that remand is required
for some dependent claims if less than all implementations
of the Choi-Gollamudi combination are affirmed. Philips
presented no separate arguments to the Board against ob-
viousness of the challenged dependent claims. Despite
Quectel’s suggestion at oral argument that certain depend-
ent claims may warrant a different outcome, we decline to
consider this waived argument. We need only address one
implementation to dispose of this appeal.
In challenging the Board’s finding of motivation to com-
bine for the second example implementation, Philips ar-
gues a skilled artisan would not be motivated to combine
Choi and Gollamudi because this implementation would in-
troduce significant drawbacks to the system. Philips con-
tends this implementation would impose limitations on the
base station’s flexibility to make certain code assignments,
resulting in unused and therefore wasted transmission re-
sources. Philips argues the contrary testimony of Quectel’s
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expert, Dr. Wells, is conclusory and therefore insufficient
to sustain the Board’s finding. Due to the inflexibility and
inefficiency in this implementation, Philips argues, sub-
stantial evidence does not support a finding of motivation
to combine. We do not agree.
Philips and Quectel presented conflicting expert testi-
mony to the Board regarding the benefits and drawbacks
of the system described in the second example implemen-
tation. Specifically, the experts disputed how a skilled ar-
tisan would have weighed those benefits and drawbacks.
The Board credited Dr. Wells’ testimony that, “even if there
was some reduced flexibility in this example, ‘the power
savings and other benefits achieved through modification
of Choi based on Gollamudi would have ordinarily out-
weighed any reduction in the flexibility in the different
combinations of the number of [codes] that can be assigned
to a set of [terminals].’” J.A. 31 (quoting J.A. 2192–94 ¶ 17
(Wells Declaration)). The Board found the second imple-
mentation would result in power savings and other benefits
and a skilled artisan would consider these benefits to out-
weigh any reduction in flexibility.
Substantial evidence supports the Board’s findings on
motivation to combine. “That the Board gave more credit
to one expert witness than another is not grounds for re-
versal.” Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365,
1374 (Fed. Cir. 2023). The Board relied on Dr. Wells’ testi-
mony that the second example implementation would re-
duce transmit power requirements, save electricity,
decrease inter-cell interference, and increase overall sys-
tem performance. See J.A. 32; J.A. 1583–85 ¶¶ 72–77
(Wells Declaration). The Board also credited Dr. Wells’ tes-
timony that a skilled artisan would have prioritized the
power savings achieved by the second implementation over
any reduction in flexibility with respect to how many codes
can be assigned to each terminal. J.A. 31; J.A. 2192–
94 ¶ 17. Philips argues this testimony is conclusory for
failure to quantify the power savings and therefore cannot
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constitute substantial evidence supporting the Board’s
finding, see Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d
1142, 1152 (Fed. Cir. 2004), but Philips presented no evi-
dence questioning the significance or legitimacy of the
power savings identified by Dr. Wells. Philips has not
shown the Board erred in relying on Dr. Wells’ testimony,
which articulated specific benefits achieved by the second
implementation and explained why a skilled artisan would
be motivated to combine Choi and Gollamudi accordingly.
II. O BJECTIVE I NDICIA OF N ONOBVIOUSNESS
Objective indicia, when present, must be considered in
an obviousness determination. Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983). When a
patentee asserts that commercial success supports its con-
tention of nonobviousness, it must establish a nexus be-
tween the evidence of commercial success and the merits of
the claimed invention. ClassCo, Inc. v. Apple, Inc., 838
F.3d 1214, 1220 (Fed. Cir. 2016). Where objective evidence
is tied to a product that embodies the claimed features and
is coextensive with them, a nexus is presumed. Fox Fac-
tory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir.
2019). Absent a presumption, a patentee can “prove nexus
by showing that the evidence of secondary considerations
is the ‘direct result of unique characteristics of the claimed
invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996)).
Philips challenges the Board’s rejection of objective in-
dicia of nonobviousness. Philips argues the claimed inven-
tion was adopted by 3GPP into the UMTS standard based
on a technical proposal submitted by Philips. Philips con-
tends its evidence shows the patented feature was adopted
due to its unique characteristics and the Board erred in dis-
regarding the evidence as lacking a nexus to the claimed
invention.
A claimed invention’s adoption as part of an industry
standard is certainly objective indicia of nonobviousness.
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We do not agree that the Board improperly rejected this
evidence. The Board’s finding was one of weight, not ad-
missibility. The Board found Philips’ evidence of nonobvi-
ousness and any nexus between that evidence and the
claimed invention was “weak at best.” J.A. 57, 61. We see
no error in the Board’s conclusion that in this case Philips’
evidence of objective indicia of nonobviousness does not re-
but Quectel’s strong prima facie case that the claimed in-
vention would have been obvious in view of Choi and
Gollamudi.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the Board’s deter-
mination that claims 1–13 and 27–33 of the ’814 patent
would have been obvious.
AFFIRMED
COSTS
No costs.
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