Case: 21-1813 Document: 79 Page: 1 Filed: 08/08/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CHARLES SHAMOON,
Appellant
v.
RESIDEO TECHNOLOGIES, INC., CENTRAL
SECURITY GROUP - NATIONWIDE, INC.,
Appellees
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2021-1813, 2021-1814
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
01335, IPR2019-01609.
______________________
Decided: August 8, 2023
______________________
CHARLES SHAMOON, SR., Little Elm, TX, pro se.
KIRK T. BRADLEY, Alston & Bird LLP, Charlotte, NC,
Case: 21-1813 Document: 79 Page: 2 Filed: 08/08/2023
2 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
for appellee Resideo Technologies, Inc. Also represented by
ADAM DOANE, LAUREN NICOLE GRIFFIN, SCOTT BENJAMIN
PLEUNE.
ANITA SPIETH, Choate Hall & Stewart LLC, Boston,
MA, for appellee Central Security Group - Nationwide, Inc.
PETER JOHN SAWERT, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by THOMAS W. KRAUSE,
FARHEENA YASMEEN RASHEED.
______________________
Before NEWMAN, REYNA, and CUNNINGHAM, Circuit
Judges.
NEWMAN, Circuit Judge.
This appeal is from two inter partes review (“IPR”) de-
cisions of the Patent Trial and Appeal Board (“PTAB” or
“Board”), finding claims 1–11 and 13–22 of United States
Patent No. 8,064,935 (“’935 patent”) unpatentable. 1 The
’935 patent is now owned by Charles Shamoon, the inven-
tor thereof. The patent had initially been assigned to Ubiq-
uitous Connectivity, LP, of which Mr. Shamoon was
president.
The IPR proceedings were requested by Resideo Tech-
nologies, Inc. and Central Security Group - Nationwide,
Inc. (collectively “appellees”). The Director of the Patent
and Trademark Office intervened to respond to the
1 Resideo Techs., Inc. v. Ubiquitous Connectivity LP,
No. IPR2019-01335,
2021 WL 262372 (P.T.A.B. Jan. 26,
2021) and No. IPR2019-01609 (P.T.A.B. Jan. 26, 2021).
The Board issued identical opinions. Citations to “Board
Dec.” refer to IPR2019-01335.
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 3
constitutional issues raised by Mr. Shamoon. We now af-
firm the decisions of the Board.
I
Substitution of Pro Se Appellant
Ubiquitous Connectivity, LP owned the ’935 patent
during the PTAB proceedings, filed the appeal now before
us, and completed briefing of the appeal. By assignment,
Ubiquitous transferred ownership of the ’935 patent to Mr.
Shamoon, and this court granted Mr. Shamoon’s request to
substitute himself as the appellant and to appear pro se.
See Letter dated July 14, 2022, ECF No. 68 (“Ubiquitous
Connectivity, LP informs the Court that it intends to as-
sign the patent at issue in these appeals to its President,
Charles Shamoon, who then intends to represent himself
pro se.”); Motion of Charles Shamoon, ECF No. 69 (inform-
ing the court that the patent sale and assignment had oc-
curred, and that Charles Shamoon intends to take over the
appeal and to proceed without representation); Order, ECF
No. 70 (granting motion to substitute and instructing Mr.
Shamoon how to proceed).
We confirm that this appeal is properly before us. The
appeal has been submitted on the briefs filed by Ubiquitous
Connectivity, LP, the appellees, and the Director of the
PTO. Mr. Shamoon adopted the briefs filed by Ubiquitous
Connectivity, LP. See Letter dated September 14, 2022,
ECF No. 72. Oral argument was waived.
II
A
The ’935 Patent Claims
The ’935 patent is titled “Ubiquitous Connectivity and
Control System for Remote Locations.” The specification
states that the invention “relates to on-demand bidirec-
tional communication between a remote access unit and a
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4 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
multifunctional base control unit in a geographically re-
mote location.” ’935 patent col. 1 ll. 20–22. The technology
is used, for example, in a home automation system to ena-
ble users to monitor and control equipment from a remote
location. The ’935 patent describes and claims a remote
access system where a base control unit monitors and con-
trols associated devices such as air conditioners, water
heaters, refrigerators, and other appliances in a user’s
home.
The patent provides that the remote unit can be in two-
way communication with the base control unit. The base
control unit sends information about monitored character-
istics to the remote unit, and the remote unit sends com-
mands to the base control unit which then sends them to
the appropriate device. Claim 1 was designated as repre-
sentative:
1. A wireless system comprising:
an environmental device;
a base unit operatively interfaced with the
environmental device and configured to
control an operation of the environmental
device;
a remote unit having wireless connectivity
and being configured to send and receive
short message service (SMS) messages;
and
a wireless module operatively interfaced
with the base unit and configured to pro-
vide wireless connectivity between the base
unit and the remote unit,
wherein the base unit is configured to send
a first SMS message, including current en-
vironmental information, to the remote
unit through the wireless module,
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 5
wherein the remote unit is configured to
send a second SMS message, including a
command for the environmental device, to
the base unit through the wireless module,
and
wherein the base unit is configured to re-
ceive the second SMS message, including
the command, and to send the command to
the environmental device to control the op-
eration of the environmental device.
The other challenged claims contain additional limitations.
Claims 20 and 22 require an additional step in the commu-
nication sequence, whereby the base control unit sends a
confirmation message to the remote unit when the instruc-
tion has been executed. Claim 20 states:
20. A wireless system comprising:
a base unit operatively interfaced with an
environmental device for controlling an en-
vironmental condition in a structure;
a receiver associated with said base unit,
and adapted for receiving a first wireless
message from a remote unit having wire-
less connectivity, wherein the first wireless
message includes a command for the envi-
ronmental device;
a controller operatively associated with
said base unit, and operatively connected
with the environmental device for execut-
ing the command; and
a transmitter operatively associated with
the controller for sending a second wireless
message to the remote unit, wherein the
second wireless message includes
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6 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
information indicating that the command
has been executed.
Independent claims 18 and 21 and dependent claims 3 and
14 state that the base control unit includes a “microcontrol-
ler.” Claim 18 states:
18. A base unit configured to communicate with an
environmental device and to communicate with a
remote unit having wireless connectivity, the base
unit comprising:
a communication interface configured to re-
ceive environmental information from the
environmental device and to send a com-
mand to the environmental device;
a wireless module configured to send a
first message to the remote unit and to re-
ceive a second message from the remote
unit, wherein the first message is a first
short message service (SMS) message in-
cluding the environmental information,
and wherein the second message is a sec-
ond short message service (SMS) message
including the command to the environmen-
tal device; and
a microcontroller configured to process the
second message including the command,
and to send the command through the com-
munication interface to the environmental
device.
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 7
B
The Prior Art
1.
The Oinonen Patent
U.S. Patent No. 6,275,710 B1 (“Oinonen”) is titled “Sys-
tem for Transmitting Status Data, Method for Transmit-
ting Status Data on a Connection Interface, and a
Telecommunication Terminal.” Oinonen describes telemet-
ric “applications in which the state of a peripheral device is
monitored and the peripheral device is controlled via a tel-
ecommunication network, preferably at least partly via a
mobile communication network.” Oinonen, col. 3 ll. 22–26.
Oinonen summarizes its disclosure as follows:
The invention is based on the idea that the telecom-
munication terminal, preferably a mobile station
coupled with a peripheral device via a connecting
interface, transmits short messages or the like to
another telecommunication terminal preferably
via a mobile communication network. In a corre-
sponding manner, control signals can be transmit-
ted as short messages from the second
telecommunication terminal to the first telecom-
munication terminal, where the device coupled
therewith is controlled on the basis of the short
messages via the connection interface.
Id., col. 4 ll. 52–61.
Oinonen shows a “first telecommunication terminal,”
which the Board found to be analogous to the ’935 patent’s
base control unit. See Board Dec. at 21. Oinonen also
shows a mobile station comprising “a microprocessor.”
Id.,
col. 7 ll. 14–15 & fig. 3. Oinonen describes specific exam-
ples of telemetric applications including a “real estate
alarm system” and a “remote-controlled heating system.”
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8 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
Id., col. 3 l. 66, col. 10, l. 63–64. Oinonen does not show all
the limitations in all the claims of the ’935 patent.
2.
The Whitley WIPO Publication
“Whitley” is World Intellectual Property Organization
International Publication No. 99/49680 (International Pa-
tent App. No. PCT/US99/06429), titled “Wireless Teleme-
try Methods and Systems for Communicating with or
Controlling Intelligent Devices.” Whitley describes “meth-
ods and apparatus for remotely monitoring and controlling
via a wireless network various devices deployed in homes
and businesses.” Whitley, col. 1 ll. 4–5. The purpose of the
Whitley system is “allowing customers to receive monitor-
ing information about activities at their facility via a mo-
bile station or a fixed terminal” and to “allow[] customers
to control the gateway and devices coupled to the gateway
from their mobile station or a fixed terminal communi-
cating over the wireless network.”
Id., col. 6 ll. 22–26.
Alarms, thermostats, and lights are all controllable devices
disclosed by Whitley.
Id., col. 12 ll. 21–23.
Whitley states that its gateway control unit may be a
“device provided with a processor, such as an Intel 386 or
486 processor.”
Id., col. 9 ll. 3–5. The purpose of Whitley is
the same as that of the ’935 patent; that is, remote commu-
nication and control of devices employing a base control
unit.
3.
The Menard Publication
“Menard,” U.S. Patent Publication No. 2002/0177428
A1, titled “Remote Notification of Monitored Condition,”
describes a bidirectional wireless system that allows for
monitoring and controlling a remote condition, such as that
of an alarm system. Menard describes an embodiment that
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 9
(1) notifies users of a received alarm signal, (2) receives re-
sponses from users for the purpose of processing the alarm,
(3) executes the process, and (4) may include further ac-
tions based on instructions. Menard, ¶ 68. Menard ex-
plains that:
¶ 179. In one embodiment, after instructions from
[a user] are completed, another round of notifica-
tion may occur. In addition, selected [users] may be
notified of the outcome of the process. For example,
the notification may entail a message such as “the
police were dispatched at 10:05 AM,” or “response
was canceled by [user] ‘Susan Smith’[”] or “[user]
Jones received message and acknowledged re-
ceipt.” In this manner, [users] are informed as to
the outcome of the event.
Menard’s claim 6 recites a method comprising receiving
messaging device addresses for contacting users associated
with a detected condition, receiving notification that the
detected condition exists, executing a computer program to
encode a message based on the detected condition, execut-
ing another computer program to send the message to user
device addresses, receiving a first instruction from a user,
and transmitting a notification to the users confirming ex-
ecution of the first instruction.
These three references are cited as prior art for the
claims on appeal from the ’935 patent’s IPR proceedings.
C
The Board Decisions
The Board joined together the IPR petitions of Resideo
and Central Security Group, and instituted IPR on all the
challenged claims. The Board held unpatentable the
claims before us on appeal. Mr. Shamoon argues that the
Board incorrectly construed and erroneously applied the
term “microcontroller” in relation to claims 3, 14, 18, and
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10 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
21 of the ’935 patent. He also states that the Board incor-
rectly applied the law of obviousness to claims 20 and 22,
in holding these claims unpatentable over the combination
of Oinonen, Whitley, and Menard. He raises a constitu-
tional challenge based on Arthrex, and he further argues
that a determination of unpatentability by these IPR pro-
ceedings constitutes an unconstitutional taking of property
because the ’935 patent application was filed before inter
partes review was authorized by the America Invents Act.
1.
Claim Construction—Claims 3, 14, 18, and 21
Appellate review of the Board’s claim construction is
guided by precedent. See, e.g., Teva Pharms. USA, Inc. v.
Sandoz, Inc.,
574 U.S. 318, 331–32 (2015) (the construction
of claim terms and claim scope is reviewed under the de
novo standard, as appropriate for rulings of law). Under-
lying factual findings of the PTAB are reviewed for support
by substantial evidence. In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1280 (Fed. Cir. 2015), aff’d sub nom. Cuozzo
Speed Techs., LLC v. Lee,
579 U.S. 261 (2016).
In Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir.
2005) (en banc), this court explained that the claims deter-
mine the scope of the patent grant, and that a person of
ordinary skill in the field of the invention is deemed to read
the claims “in the context of the entire patent” including
the specification and the prosecution history.
Id. at 1312–
13, 1317. The court wrote that “the specification ‘is always
highly relevant to the claim construction analysis. Usu-
ally, it is dispositive; it is the single best guide to the mean-
ing of a disputed term.’” Id. at 1315 (quoting Vitronics
Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir.
1996)). We stated that “extrinsic evidence ‘can shed useful
light on the relevant art,’ [but] is ‘less significant than the
intrinsic record in determining the legally operative mean-
ing of claim language.’” Id. at 1317 (quoting C.R. Bard, Inc.
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 11
v. U.S. Surgical Corp.,
388 F.3d 858, 862 (Fed. Cir. 2004)).
We concluded that “[i]n sum, extrinsic evidence may be
useful to the court, but it is unlikely to result in a reliable
interpretation of patent claim scope unless considered in
the context of the intrinsic evidence.” Id. at 1319.
The Board stated the rule that each claim is construed
“in accordance with the ordinary and customary meaning
of such claim as understood by one of ordinary skill in the
art and the prosecution history pertaining to the patent.”
Board Dec. at 9 (quoting
37 C.F.R. § 42.100(b)). The Board
held that the construction of “microcontroller” affects the
obviousness of claims 3, 14, 18, and 21.
Id. at 31–33.
The Board reviewed the specification and claims of the
’935 patent and its prosecution history, as well as the three
technical dictionary definitions and the expert testimony
provided by both sides. The Board then rejected the patent
owner’s narrower construction of “microcontroller” as “a
special-purpose computing device including at least a CPU,
main memory, timing circuits, and I/O circuitry designed
for a minimal quantity of chips and then programmed to
handle a particular task,”
id. at 9–13, and largely accepted
the appellees’ broader construction, adopting the meaning
“a microcomputer, microprocessor, or other equipment
used for process control,” id. at 13. The Board found that:
Oinonen’s microprocessor and Whitley’s 386 pro-
cessor are microcontrollers because they are pro-
grammed to (a) receive information from an
environmental device, (b) send SMS messages con-
taining that information to a remote device, (c) re-
ceive SMS messages containing a command from
the remote device, and (d) control the environmen-
tal device as commanded.
Id. at 32. The Board found that the combination of the Oi-
nonen and Whitley references teaches every limitation of
claims 3, 14, 18, and 21, id. at 31–33, and that a person
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12 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
skilled in the art would be motivated to combine these
teachings. The Board held these claims unpatentable on
the ground of obviousness. Id. at 32–33.
Mr. Shamoon argues that the Board erred in interpret-
ing the expert testimony that was presented by both sides.
He states that both experts agreed that “microcontroller”
has a more specific meaning than that construed by the
Board. He states that the Board offered no explanation for
ignoring the testimony of the experts, and that the Board
disregarded the precedent established in Phillips by giving
undue weight to a dictionary definition of “microcontroller”
over the evidence of the parties’ experts. Mr. Shamoon
cites other dictionary definitions as support for a narrow
definition of “microcontroller” in claims 3, 14, 18, and 21.
He states that the specification and included figures con-
form to the narrowed definition, and that the narrowed def-
inition precludes obviousness over the cited references.
The appellees respond that Mr. Shamoon is attempting
to narrow the definition of a well-understood term that is
used in the ’935 patent in its ordinary meaning.
We agree with the appellees. The ’935 patent claims
simply state that the invention uses a microcontroller “to
process the . . . message . . . and to send the command,” in
claims 18 and 21, and that a microcontroller-based pro-
cessing unit can have “customizable application specific
software,” in claims 3 and 14; the claims are not limited to
specific components or circuitry, as now argued by Mr. Sha-
moon.
Specification figures 3 and 4 depict a microcontroller
and, respectively, a remote unit and base control unit. Fig-
ure 3 shows a microcontroller interfacing with external
ROM and RAM, and figure 4 shows a microcontroller inter-
facing with an external I/O (input/output) component. The
microcontroller in figure 3 is described as using the ROM
to access custom application software: “The application
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 13
software can be downloaded into the ROM by transmission
from the cellular network to the antenna to the microcon-
troller, which stores the software therein.” ’935 patent col.
4 ll. 38–41 (reference numbers omitted). The specification
explains that “[t]he RAM provides service or scratchpad
memory for computational use by [the] microcontroller.”
Id., col. 4 ll. 44–45. These statements do not require the
microcontroller to contain a main memory. For figure 4,
the specification states that the microcontroller may inter-
face with an external I/O component to communicate with
the wireless interface module. Id., col. 4 ll. 46–52, col. 5 ll.
11–16.
The limitations that Mr. Shamoon states distinguish
his microcontroller from the general definitions in diction-
aries do not appear in the specification or the prosecution
history. The Board analyzed the technical dictionary defi-
nitions cited by the parties and found that all the defini-
tions require that a microcontroller include a CPU that has
been programmed to perform a control function. Board
Dec. at 12. For example, the Board considered Mr. Sha-
moon’s proposed definition from the Comprehensive Dic-
tionary of Electrical Engineering (2d ed.), which defines a
microcontroller as “[a]n integrated circuit chip that is de-
signed primarily for control systems and products.” Id. at
10. The Board pointed out that the definitions state that a
microcontroller “usually” and “typically” contains its own
memory, I/O interface, and timers. Id. at 13. However, the
definitions do not require the additional limitations which
Mr. Shamoon states distinguish his system from the prior
art.
The ’935 patent’s description and figures support the
Board’s ruling that “microcontroller” is correctly construed
as a generic component as defined by the Board. Although
we agree that there are differences in detailed definitions
of “microcontroller,” both parties’ experts acknowledged
that such differences do not affect the Board’s construction
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14 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
for the ’935 patent. For example, the appellant’s own ex-
pert, Mr. Zatkovich, agreed that nothing in claim 3 re-
quires base unit functionality beyond receiving a “message
and sending a command.” The appellees’ expert, Dr. Jeffay,
testified that the term “microcontroller” means “some sort
of processing unit . . . that has a processor, a memory, and
some I/O capabilities.” Dr. Jeffay also stated that “micro-
controller is a fairly generic term” and that “some people
can certainly use [microcontroller and microprocessor] syn-
onymously in a lot of contexts.” He explained that “the mi-
crocontroller is more of a system, a small system, whereas
the microprocessor would be just a component of the sys-
tem,” and he disagreed with the idea that “microcontrollers
are limited to single-chip designs.” Mr. Shamoon states
that this supports his position, and the appellees respond
that a “microcontroller” is not confined to a single chip that
includes CPU, memory, I/O, and timers, but rather, as Dr.
Jeffay testified, a “microcontroller” includes the processor
embedded in a system that includes these components.
Resideo Br. 22, 44–45 (citing Appx11039 ¶ 267). Dr. Jef-
fay’s testimony is not contradictory, but rather reveals, just
as the dictionary definitions did, that microcontroller has a
broad enough meaning to encompass both processors with
integrated I/O, as urged by Mr. Shamoon, as well as other
forms of microprocessors used for process control in con-
junction with other external elements.
We conclude that the Board correctly held that “micro-
controller” includes microprocessors along with external
peripheral components for process control. This holding is
supported by the lack of structural demands for the micro-
controller in the claim language and the specification, by
the specification figure descriptions, by the dictionary def-
initions, and by expert testimony. On this construction, the
Board correctly determined that the microprocessor-based
systems of Oinonen and Whitley render obvious the
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 15
microcontroller in claims 3, 14, 18, and 21. We affirm the
Board’s ruling that these claims are unpatentable as obvi-
ous.
2.
Claims 20 and 22
The Board held claims 20 and 22 of the ’935 patent to
be unpatentable for obviousness in view of the combination
of Whitley, Oinonen, and Menard. The Board found that
Oinonen and Whitley taught a base unit interfacing with
an environmental device and having a receiver that re-
ceives commands for the environmental device. Board Dec.
at 48. The Board further found that Oinonen and Whitley
teach confirmation messages of receiving SMS mes-
sages/commands. Id. The Board also found that Menard
teaches receiving and executing a command, and transmit-
ting a confirmation that the command has been executed.
Id.
The Board found that the three references are in the
same field of endeavor and deal with the same field of tech-
nology, whereby it would have been obvious to persons of
ordinary skill in this field to combine their teachings.
Board Dec. at 45–46. Mr. Shamoon argues the distinction
that the “message” recited in claims 20 and 22 concerns
confirmation that a command for an environmental device
was executed, and that Menard does not teach this type of
message. Mr. Shamoon states that even if Menard is
deemed to teach sending a message confirming that a com-
mand has been executed, the Menard command is not for
an environmental device as required by claims 20 and 22.
Mr. Shamoon states that the Board did not identify any
reference that teaches the claimed environmental limita-
tion, and that the Board wrongly relied on “common sense”
or “ordinary creativity” to supply the missing teaching. He
argues that the Board’s analysis fell short of the “searching
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16 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
inquiry” required by DSS Tech. Mgmt., Inc. v. Apple Inc.,
885 F.3d 1367, 1375 (Fed. Cir. 2018).
The Board correctly characterized Mr. Shamoon’s ar-
guments with respect to the environmental limitation as
“improperly attack[ing] the teachings of the individual ref-
erences rather than their combined teachings.” Board Dec.
at 47. Because Oinonen and Whitley disclose the environ-
mental devices and commands, it does not avail Mr. Sha-
moon to complain that Menard does not. The Board did not
rely on either common sense or ordinary creativity to sup-
ply any missing environmental teaching, but rather
pointed to the Oinonen and Whitley references. Id. at 48.
The Board in its analysis referred to ¶ 68 of Menard as
an example whereby a user is notified of an alarm by an
active home alarm system, the user may “respond for the
purpose of managing the alarm processing,” and the “sys-
tem then executes the process . . . based upon executing the
instructions.” Menard ¶ 68; Board Dec. at 47. Menard pro-
vides further details: “[I]f the alarm is cancelled, then the
present system automatically updates the [user] of this
outcome.” Menard, ¶ 77. This conforms to the description
in the ’935 patent whereby a message is sent to the user’s
remote unit to confirm execution of the instruction.
We affirm that claims 20 and 22 are obvious over the
combination of Oinonen, Whitley, and Menard, for both Oi-
nonen and Whitley teach base units communicating with
environmental devices, and Menard teaches sending a con-
firmation message after a command is executed. We con-
clude that it would be obvious to an artisan in this field to
combine these teachings. The Board’s decision is affirmed.
III
Finality in view of Arthrex
Mr. Shamoon argues that the administrative patent
judges who decided this case were unconstitutionally
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SHAMOON v. RESIDEO TECHNOLOGIES, INC. 17
appointed, as described in United States v. Arthrex, Inc.,
594 U.S. __,
141 S. Ct. 1970 (2021). Applying Arthrex, this
court previously remanded this appeal on this ground. See
ECF No. 61 (removing appeal from argument calendar and
remanding “for the limited purpose of allowing appellant
the opportunity to request Director rehearing”); ECF No.
63 (Letter from Ubiquitous Connectivity, LP stating that
“on June 10, 2022, the Director of the United States Patent
and Trademark Office issued an order denying Ubiqui-
tous’s request for Director review”). This challenge is re-
solved.
IV
Constitutionality of IPR for Pre-AIA Filing
Mr. Shamoon argues that the application of post-grant
proceedings created by the America Invents Act to patents
that were applied for before the AIA was enacted consti-
tutes an impermissible taking by the United States with-
out just compensation, in violation of the Fifth Amendment
of the Constitution. Mr. Shamoon points out that pre-AIA
patent applicants had no way of knowing that their duly
granted patents would be subject to this new post-grant
agency proceeding, and that this change in the patent bar-
gain is also a violation of due process.
This court considered this question in Celgene Corp. v.
Peter,
931 F.3d 1342, 1362 (Fed. Cir. 2019), and ruled that
“the retroactive application of IPR proceedings to pre-AIA
patents is not an unconstitutional taking under the Fifth
Amendment.” Accord, Mobility Workx, LLC v. Unified Pa-
tents, LLC,
15 F.4th 1146, 1157 (Fed. Cir. 2021); Golden v.
United States,
955 F.3d 981, 989 (Fed. Cir. 2020). The
court also held that the new IPR system does not violate
due process when applied to pre-AIA patents. Mobility
Workx, 15 F.4th at 1157 (rejecting several constitutional
challenges).
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18 SHAMOON v. RESIDEO TECHNOLOGIES, INC.
Applying precedent, no constitutional violation arises
in the application of post-grant proceedings to pre-AIA pa-
tent filings.
CONCLUSION
We have considered Mr. Shamoon’s remaining argu-
ments and found them unpersuasive. We affirm the
Board’s ruling of unpatentability on the ground of obvious-
ness of the appealed claims of the ’935 patent.
AFFIRMED
