Case: 22-1164 Document: 41 Page: 1 Filed: 02/23/2023
NOTE: This disposition is nonprecedential.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: 2 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 con-
struction 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 gen-
erally concerns a handle for a handheld terminal, such as
a mobile phone. Figure 4 of the patent shows an embodi-
ment 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:
Case: 22-1164 Document: 41 Page: 3 Filed: 02/23/2023
MAALOUF v. MICROSOFT CORPORATION 3
J.A. 43.
Claims 29 and 37 are reproduced below:
29. A handheld device to wirelessly operate a cam-
era 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 de-
vice,
wherein the command key is positioned on the han-
dle 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, pro-
vides a wireless connection to the mobile device,
wherein remote control of the camera feature of the
mobile device is provided over the wireless connec-
tion; 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 cam-
era feature, wherein the command key is one of a
plurality of command keys positioned on the han-
dle apparatus, and wherein each of the plurality of
Case: 22-1164 Document: 41 Page: 4 Filed: 02/23/2023
4 MAALOUF v. MICROSOFT CORPORATION
command key corresponds to a respective com-
mand.
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 de-
cision 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 ev-
idence supplied by the parties, including a declaration from
Microsoft’s expert, Eric Welch. In connection with the par-
ties’ dispute over the proper construction of the claim term
“remote control,” the Board did not limit claim 29 to a “non-
fixed” implementation during use – in which the mobile de-
vice is not held by the invention’s holder. Relatedly, the
Board found Rosenhan provided remote control via wire-
less connection as required by claim 29’s remote control el-
ement, regardless of whether a fixed or non-fixed
implementation is utilized.
The Board further concluded that Kim disclosed a slid-
ing 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 rea-
son to combine Rosenhan and Kim to disclose the limita-
tions recited in claim 37, by modifying Rosenhan’s
mounting structure to include Kim’s adjustable phone
Case: 22-1164 Document: 41 Page: 5 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 moti-
vated to combine Fromm, Fenton, and Bolton such that
claims 29 and 37 would have been obvious.
Throughout its analysis, the Board variously summa-
rized 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 ju-
risdiction 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 con-
clusions from the evidence does not prevent an administra-
tive 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 in-
trinsic 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 fac-
tual 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 dis-
cretion, . . . otherwise not in accordance with law
. . . [or] unsupported by substantial evidence.
Case: 22-1164 Document: 41 Page: 6 Filed: 02/23/2023
6 MAALOUF v. MICROSOFT CORPORATION
Critically, in order to allow effective judicial re-
view, . . . the agency is obligated to provide an ad-
ministrative 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 ar-
ticulate logical and rational reasons for [its] deci-
sion[ ].
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 chal-
lenge, which seeks vacatur because the Commissioner of
Patents acted here, rather than the Director of the U.S. Pa-
tent 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) (re-
jecting 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 mo-
bile device during use, as well as a “wireless interface
Case: 22-1164 Document: 41 Page: 7 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 non-
fixed 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 ad-
dressing them.
Instead, Maalouf asserts that the specification defines
“remote control” as limited to non-fixed embodiments,
pointing to this statement in particular: “In certain embod-
iments, 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 de-
clined 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 con-
struction of “remote control” is that, he insists, “remote con-
trol” and “wireless connection” must have different
meanings because they are different terms. Even accept-
ing his reasoning as correct, the Board never construed
these terms as having the same meaning. Instead, the
Board simply declined to explicitly construe “remote con-
trol,” finding claim 29 was not limited to a non-fixed imple-
mentation during use. As Microsoft explains, the patent
uses “wireless connection” as a mechanism by which to pro-
vide “remote control” functionality.
Case: 22-1164 Document: 41 Page: 8 Filed: 02/23/2023
8 MAALOUF v. MICROSOFT CORPORATION
In any event, even if we were to adopt Maalouf’s nar-
rower 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 Rosen-
han disclosed non-fixed remote control, but the Board’s
finding is supported by substantial evidence. As the Board
explained:
Rosenhan explicitly states that “electronic connec-
tion interface 118 may comprise a wireless connec-
tion (e.g., through Bluetooth, IR, etc.) so that no
physical electronic connection is needed.” Thus, ir-
respective 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 cam-
era 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 sub-
stantial 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 ap-
peal. 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: 9 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 fur-
ther noted:
In view of Rosenhan’s disclosure of accommodating
phones with various shapes and sizes, a POSITA
would have been motivated to replace the mount-
ing 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 testi-
mony because, in his view, it is merely conclusory and,
therefore, inadequate. We do not agree that Welch’s testi-
mony, 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 gov-
erning legal standards – to enable judicial review
and to avoid judicial displacement of agency au-
thority – necessarily depends on context. A brief
explanation may do all that is needed if, for exam-
ple, the technology is simple and familiar and the
prior art is clear in its language and easily under-
stood. 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 tech-
nology 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 nec-
essary, in this case the Board’s analysis is sufficiently dis-
cernable 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) (not-
ing 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 deci-
sion with respect to grounds 1 (Rosenhan) and 2 (Rosenhan
and Kim), we need not and do not address ground 3
(Fromm, Fenton, and Bolton).
