Case: 21-2352 Document: 34 Page: 1 Filed: 08/02/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., SAMSUNG
RESEARCH AMERICA, INC.,
Appellants
v.
DYNAMICS INC.,
Appellee
______________________
2021-2352
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00499.
______________________
Decided: August 2, 2022
______________________
JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for appellants. Also represented by
CHRISTOPHER MIZZO; GREG AROVAS, JAMES E. MARINA, New
York, NY.
ROBERT WILLIAM MORRIS, Eckert Seamans Cherin &
Mellott, LLC, White Plains, NY, argued for appellee. Also
represented by BRIDGET MONTGOMERY, Harrisburg, PA.
Case: 21-2352 Document: 34 Page: 2 Filed: 08/02/2022
2 SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC.
______________________
Before MOORE, Chief Judge, TARANTO and STARK, Circuit
Judges.
MOORE, Chief Judge.
Samsung Electronics Company, Ltd., Samsung Elec-
tronics America, Inc., and Samsung Research America, Inc.
(collectively, Samsung) appeal a Patent Trial and Appeal
Board final written decision determining that Samsung
failed to show claims 1 or 5–8 of
U.S. Patent No. 8,127,153
would have been obvious under
35 U.S.C. § 103. We affirm.
BACKGROUND
The ’153 patent is owned by Dynamics Inc. and is di-
rected to “magnetic stripe emulators” for “generat[ing] elec-
tromagnetic fields that directly communicate data to a
read-head of a magnetic stripe reader,” such as a reader of
conventional magnetic stripe cards (e.g., a credit card).
’153 patent at 1:28–30. To generate these fields, the emu-
lator may comprise a waveform generator for fluctuating
the amount of current traveling through an inductor “such
that one or more tracks of magnetic stripe data encoded
with [an] analog waveform may be communicated to a
read-head of a magnetic stripe reader.”
Id. at 2:20–22.
Digital representations of the analog waveform encoding
the tracks of data may be stored within the memory of an
emulator card and retrieved at the user’s direction.
Id. at
2:23–65.
Claim 1 of the ’153 patent, the only independent claim
on appeal, recites:
1. A device comprising:
a magnetic stripe emulator operable to
communicate an analog waveform encoded
with at least one track of magnetic stripe
data to a magnetic stripe reader; and
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SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC. 3
a waveform generator operable to generate
said analog waveform from a digital repre-
sentation of said at least one track of mag-
netic stripe data;
wherein said device is operable to retrieve
said digital representation from a plurality
of digital representations of said at least
one track of magnetic stripe data.
’153 patent at claim 1 (emphasis added).
Samsung petitioned for inter partes review of claims 1
and 5–8 of the ’153 patent on two grounds. See Samsung
Elecs. Co. v. Dynamics Inc., No. IPR2020-00499,
2021 WL
3519336, at *1 (P.T.A.B. Aug. 10, 2021) (FWD). In one, it
argued the claims would have been obvious over U.S. Pa-
tent No. 4,868,376 (Lessin) and
U.S. Patent No. 7,690,580
(Shoemaker).
Id. In the other, it argued the claims would
have been obvious over
U.S. Patent No. 6,206,293 (Gut-
man) in view of Shoemaker.
Id. at *3. Dynamics disputed
whether the prior art taught claim 1’s wherein limitation
and whether a skilled artisan would have been motivated
to combine the prior art in the manner claimed. See
id. at
*9–14, *17–19.
With respect to the Lessin and Shoemaker ground, the
Board found a motivation to look to Shoemaker to improve
Lessin, but that the combination Samsung asserted does
not satisfy the wherein limitation.
Id. at *17–19. With re-
spect to Gutman and Shoemaker, the Board found both
that the references do not teach the wherein limitation and
that Samsung failed to establish a motivation to combine.
Id. at *9–14.
Samsung appeals. We have jurisdiction under
28
U.S.C. § 1295(a)(4)(A).
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4 SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC.
DISCUSSION
We review the Board’s legal determination of obvious-
ness de novo and any underlying findings of fact for sub-
stantial evidence. Outdry Techs. Corp. v. Geox S.p.A.,
859
F.3d 1364, 1367 (Fed. Cir. 2017). What prior art references
disclose and whether a skilled artisan would have been mo-
tivated to combine the references are questions of fact. In
re Kahn,
441 F.3d 977, 985 (Fed. Cir. 2006).
I
Samsung first argues that the Board failed to comply
with the Administrative Procedure Act (APA) in its analy-
sis of Lessin and Shoemaker because it allegedly did not
address one of Samsung’s arguments regarding the teach-
ings of Shoemaker. We do not agree.
Before the Board, Samsung argued that the combina-
tion of Lessin and Shoemaker disclosed claim 1’s wherein
limitation. Specifically, it relied on Lessin’s interactive
personal data system as disclosing a device operable to re-
trieve information from memory and Shoemaker as disclos-
ing a plurality of digital representations of one or more
tracks of magnetic stripe data. J.A. 125–28. Samsung al-
leged that Shoemaker disclosed the plurality of represen-
tations in two ways: (1) by teaching multiple profiles, e.g.,
personal and business profiles, associated with the same
credit card information (profile representations), and (2) by
teaching the communication of forward- and reverse-ori-
ented track data depending on the direction its card is
swiped (directional representations). J.A. 116–17, 135. On
appeal, Samsung asserts that the Board “did not address”
Samsung’s argument that Shoemaker’s directional repre-
sentations disclose the claimed plurality of digital repre-
sentations, “much less find that the representations do
not.” Appellant’s Br. 29.
Contrary to Samsung’s assertions, the Board did not
disregard Samsung’s directional representations-based
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SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC. 5
argument. Not only did the Board acknowledge the argu-
ment, FWD, at *17, it expressly found that “[d]espite [Sam-
sung’s] . . . argument that Shoemaker discloses a card
emulating the same track data regardless of directionality,
we find the record does not support [its] contention.”
Id. at
*18 (emphasis added). Samsung’s assertion that the Board
did not address whether Shoemaker’s directional represen-
tations disclose the claimed plurality of digital representa-
tions is simply incorrect.
During oral argument, Samsung pivoted and argued
that the Board’s decision was deficient not because it failed
to address Shoemaker’s directional representations, but
because its analysis of those representations was inade-
quate. See Oral Arg. at 6:28–7:18 1. Samsung failed to ad-
equately raise this argument in its opening brief and
therefore forfeited it. SmithKline Beecham Corp. v. Apotex
Corp.,
439 F.3d 1312, 1319 (Fed. Cir. 2006) (“Our law is
well established that arguments not raised in the opening
brief are waived.” (citation omitted)). While Samsung’s
opening brief alludes in passing to an alleged lack of clarity
in the Board’s analysis, those statements cannot fairly be
read in context to have raised any argument in the alter-
native. See Appellant’s Br 30–31. Rather, Samsung’s crit-
icism of the Board’s analysis—namely, that it “conflated”
Samsung’s directional- and profile-based representation
arguments—was made in support of its contention that the
Board failed to address Shoemaker’s directional represen-
tations.
Id.
Regardless, we do not think the Board’s analysis is so
lacking that we cannot “reasonably discern that it followed
a proper path, even if that path is less than perfectly clear.”
Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359,
1365 (Fed. Cir. 2015). The Board acknowledged and
1 Available at https://oralarguments.cafc.uscourt
s.gov/default.aspx?fl=21-2352_06062022.mp3
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6 SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC.
accurately articulated Samsung’s contention that Shoe-
maker discloses a plurality of digital representations of at
least one track of magnetic stripe data through its direc-
tional representations. FWD, at *17. It then expressly re-
jected that argument, finding, based on substantial
evidence (including a concession by Samsung’s counsel),
that Shoemaker does not teach having dual representa-
tions of the same track data available for retrieval, as
claimed, but creates a particular representation on the fly
when a card is swiped, depending on the direction of the
swipe.
Id. at *18. The Board explained that Shoemaker
does not “read on the challenged claim limitation because
Shoemaker discloses that when its card determines swipe
direction it then represents or encodes the data on the dy-
namically reconfigurable data interface so that the data
stream is always provided in the experienced order irre-
spective of the swipe direction.”
Id. (internal quotations
omitted; emphases added). With a premise of Samsung’s
asserted combination of Lessin and Shoemaker rejected,
the Board held that Samsung did not demonstrate that a
skilled artisan would have made a combination of the two
references that had a memory containing dual representa-
tions of the same track data for retrieval as required by the
claim. The Board’s analysis charts a discernable path.
Samsung would have us throw out the Board’s decision
because its analysis allegedly conflates Samsung’s direc-
tional- and profile-based representation arguments. While
the Board’s explanation may not be a model of clarity, “we
do not require perfect explanations.” In re Nuvasive, Inc.,
842 F.3d 1376, 1382 (Fed. Cir. 2016). The Board intro-
duced its analysis by reference to Shoemaker’s profiles, but
the substance of that analysis unambiguously deals with
directional representations. Moreover, this analysis is es-
sentially identical to the explanation the Board gave when
rejecting Shoemaker’s directional representations in the
context of the Gutman and Shoemaker combination, allevi-
ating any uncertainty as to which argument the Board
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SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC. 7
intended to address. Compare FWD, at *12, with
id. at *18.
Under these circumstances, we cannot conclude that the
Board’s decision is so deficient as to violate the APA. See
In re Huston,
308 F.3d 1267, 1280–81 (Fed. Cir. 2002)
(holding Board’s reasoning sufficient where its conclusions
were “cryptic,” but its path could nonetheless be reasonably
discerned). We therefore affirm the Board’s decision with
respect to Lessin and Shoemaker.
II
Samsung next challenges the Board’s decision concern-
ing Gutman in view of Shoemaker. Because substantial
evidence supports the Board’s finding that a skilled artisan
would not have been motivated to combine those refer-
ences, we affirm.
Before the Board, Samsung argued that the combina-
tion of Gutman and Shoemaker teach claim 1’s wherein
limitation. 2 As above, it relied on Gutman as disclosing a
device operable to retrieve data from memory and Shoe-
maker as disclosing a plurality of digital representations,
including through its directional representations. And it
contended that a skilled artisan would have been moti-
vated to modify Gutman to incorporate the directional rep-
resentations of Shoemaker into Gutman’s memory. J.A.
103–06. Samsung explained that implementing Shoe-
maker’s directional representations in Gutman’s memory
would “improve the compatibility of Gutman’s card with
the then-existing magnetic stripe card infrastructure by,
for example, allowing it emulate multiple representations
of the same data traditionally found on a conventional
magnetic stripe card.” J.A. 103–04. The Board rejected
this argument, reasoning that Samsung failed to “explain
2 Samsung does not challenge the Board’s determi-
nation that Gutman alone does not disclose the wherein
limitation.
Case: 21-2352 Document: 34 Page: 8 Filed: 08/02/2022
8 SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC.
why altering either of Gutman or Shoemaker would im-
prove the functionality over what is expressly disclosed in
each reference” or how the proposed combination “would be
more commercially convenient for card users over what is
disclosed originally in each reference.” FWD, at *13.
Substantial evidence supports the Board’s finding.
Gutman discloses a magnetically communicative card de-
signed to emulate conventional magnetic stripe cards using
electronically varying magnetic fields. J.A. 1726 at Ab-
stract. Gutman further discloses that “movement of the
card . . . is not required,” that “no ‘swiping’ movement is
necessary,” and that “communication of data by the card
. . . is independent of movement of the card or placement of
the card within the magnetic card reader.” J.A. 1742–43 at
16:60–63, 17:4–13. Dynamics’ expert likewise testified
that swiping, and thus swipe direction, was irrelevant to
the functioning of Gutman’s card. J.A. 3339–41 (¶¶ 66–
71). He further testified that a skilled artisan would not
have been motivated to incorporate Shoemaker’s direc-
tional representations into Gutman because doing so would
introduce a dependency on swipe direction that did not pre-
viously exist. J.A. 3342 (¶ 72). This is substantial evidence
that incorporation of Shoemaker’s representations based
on swipe direction would not improve the functionality of
Gutman’s card, negating Samsung’s proposed motivation
to combine the references. FWD, at *13–14.
Samsung argues the evidence requires the opposite re-
sult. See Appellants Br. 52–53. It points to Gutman’s dis-
closure that, although not required, its card “may still be
‘swiped’ through a magnetic card reader.” J.A. 1742 at
16:64–67. And it cites its own expert’s testimony that
Shoemaker would provide additional functionality to Gut-
man’s card by allowing it to operate with card readers re-
gardless of the orientation it is swiped, a function it
contends Gutman alone lacks. J.A. 720–23 (¶¶ 72–74).
Samsung’s objection is merely a disagreement with the
Board’s weighing of the evidence and the conclusions it
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SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC. 9
drew therefrom. But “the possibility of drawing two incon-
sistent conclusions from the evidence does not prevent an
administrative agency’s finding from being supported by
substantial evidence.” Consolo v. Fed. Mar. Comm’n,
383
U.S. 607, 620 (1966). Samsung does not overcome the sub-
stantial evidence supporting the Board’s finding, so we
must uphold it.
Samsung also argues the Board committed various le-
gal errors in assessing motivation to combine. In particu-
lar, it contends that (1) the Board erred by requiring
Gutman or Shoemaker to provide an express motivation to
combine, and (2) the Board erred by reversing Samsung’s
proposed obviousness combination, treating Shoemaker as
the primary reference to be modified in view of Gutman.
Appellant’s Br. 41–48. 3 We do not agree.
The Board did not require the prior art references
themselves to explicitly provide a motivation to combine.
Instead, it considered the motivations that Samsung pro-
posed, including to “improve the functionality of Gutman’s
card to make it more commercially convenient” by utilizing
directional representations, and simply found them unper-
suasive. See FWD, at *12. The Board reasoned that Sam-
sung failed to establish that modifying Gutman to include
forward- and reverse-swipe representations would in fact
lead to improved functionality or commercial convenience
given that Gutman’s card does not need to be swiped at all.
Id. at *13 (“Nor does the Petitioner or the declarant explain
[] how the combination of teachings would be more
3 Samsung raises additional arguments concerning
the Board’s treatment of Gutman and Shoemaker individ-
ually. We need not reach these arguments because we con-
clude the Board did not err in assessing whether a skilled
artisan would have combined Gutman and Shoemaker in
the manner proposed, and that substantial evidence sup-
ports the Board’s factual finding.
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10 SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC.
commercially convenient for card users over what is dis-
closed originally in each reference.”). We detect no legal
error in this analysis.
Samsung relies on the Board’s statement that “Peti-
tioner admits [] that Gutman does not recognize the prob-
lem of presenting a track in a swipe-appropriate manner in
order to be compatible with most card readers.” Id. at *11.
That single sentence, found not in the section devoted to
the Board’s motivation-to-combine analysis, but in the sec-
tion mapping the references’ teachings to the claim lan-
guage, does not demonstrate error. In its motivation-to-
combine analysis, the Board did not require Gutman to ex-
pressly recognize any problem. It considered—and re-
jected—the motivation that Samsung proposed.
Accordingly, we conclude the Board did not err in this as-
pect of its analysis.
Samsung’s argument that the Board erred by inverting
its obviousness combination is similarly unpersuasive. Ap-
pellant’s Br. 46. Samsung again grounds its objection in a
single sentence of the Board’s analysis: “Petitioner fails to
identify why someone reading Shoemaker would cho[o]se
to apply its teachings to Gutman in order to solve a problem
already addressed in Shoemaker itself.” FWD, at *13. In
doing so, Samsung ignores the remainder of the Board’s de-
cision, which unequivocally shows that it considered and
rejected Samsung’s argument for modifying Gutman in
view of Shoemaker. The Board went on to explain that
Samsung failed to “explain why altering either of Gutman
or Shoemaker would improve the functionality over what
is disclosed in each reference.” Id. (emphasis added). And
the Board found that Samsung’s proposed modification of
Gutman amounted to the combination of “disparate parts
of the prior art” without a sufficient explanation as to why
a skilled artisan “would have chosen the specific features
relied upon by [Samsung] to read on the claim.” Id. That
reasoning was not legal error.
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SAMSUNG ELECTRONICS CO., LTD. v. DYNAMICS INC. 11
Having found that substantial evidence supports the
Board’s findings and that there was no legal error in the
Board’s motivation to combine analysis, we affirm the
Board’s holding that Samsung failed to establish that
claims 1 or 5–8 would have been obvious over Gutman in
view of Shoemaker.
CONCLUSION
Because we conclude that the Board complied with the
APA in assessing the Lessin and Shoemaker combination,
that substantial evidence supports its finding that Sam-
sung failed to establish a motivation to combine Gutman
and Shoemaker, and that it applied the correct legal frame-
work in assessing the motivation to combine those refer-
ences, we affirm.
AFFIRMED
COSTS
Costs to Dynamics.
