Pavo Solutions LLC v. Kingston Technology Company
711 F. App'x 1020
| Fed. Cir. | 2017Background
- Pavo Solutions owns U.S. Patent No. 6,926,544 directed to a USB flash memory device with a rotating (hinged) cover; claims differ on whether a hinge protuberance/element is merely "on" a case or "formed on" (i.e., attached/integrated) the case.
- Kingston filed two IPR petitions challenging many claims as obvious over combinations of prior art (notably Matsumiya, Deng, Wu, Hoogesteger, and others); the PTAB instituted multiple grounds and issued two final written decisions splitting which claims were obvious.
- The Board construed “hinge protuberance” broadly (a projecting/ protruding hinge structure) and treated "on" as broader than "formed on," concluding some claims (the "hinged to" and certain "protuberance on" claims) were obvious but that claims reciting a protuberance "formed on" the case were not.
- Pavo appealed the Board’s distinction between "on" and "formed on" and argued lack of motivation to combine the references; Kingston cross‑appealed, arguing both phrases should be read broadly and additional modifications (e.g., "snap‑on" hinges) would render more claims obvious.
- The Federal Circuit reviewed claim construction de novo and factual findings for substantial evidence, held that "on" and "formed on" in context both require the protuberance to be attached/integrated into the case, affirmed obviousness of the "hinged to" claims (over Matsumiya+Deng), reversed as to some "protuberance on" claims, and affirmed nonobviousness of the "protuberance formed on" claims.
Issues
| Issue | Pavo's Argument | Kingston's Argument | Held |
|---|---|---|---|
| Construction of "hinge protuberance on" vs "formed on" | Both terms require attachment/integration to case; "on" is shorthand for "formed on" | Terms are location-only; neither requires attachment—should be broad | Court: Both terms, in context, denote attachment/integration to the side of the case (reversing Board’s distinction) |
| Obviousness of "hinged to" claims (e.g., claim 8) | No motivation to combine; prior art sought full dust-proof covers, so wouldn’t favor partial/exposed USB designs | Prior art (Matsumiya + Deng) would motivate a person of ordinary skill to create a hinged cover; modification to achieve snap-on features is within skill | Court: Affirmed Board — claims 8, 9, and 16–23 are obvious over Matsumiya in view of Deng |
| Obviousness of "protuberance on" claims (claims 11,12,14) | Prior art does not teach a protuberance attached/integrated to the side of the case; nonobvious | Even under attachment construction, a skilled artisan could implement snap‑on hinge to achieve claimed structure | Court: Claims 11,12,14 are not unpatentable as obvious; Board’s factual findings supporting nonobviousness of "formed on" claims also support these claims |
| Obviousness of "protuberance formed on" / "formed on" claims (claims 1,2,4,5,7,24) | These recite "formed on" (integration) and are not taught by cited prior art | Board should have adopted broader construction and found them obvious (or Kingston could have argued modifications) | Court: Affirmed Board — these claims are not unpatentable as obvious; Kingston’s late "snap-on" modification argument was not raised in IPR petitions and was not considered |
Key Cases Cited
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (IPR claim‑construction uses broadest reasonable interpretation)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (framework for obviousness/inventive step)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (Graham factors for obviousness)
- Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (defer to factual findings underlying claim construction)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (standard for substantial evidence)
- PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747 (Fed. Cir. 2016) (standard of review for IPR decisions)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (reviewing Board’s claim constructions and extrinsic evidence)
- Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013) (obviousness as legal conclusion based on underlying factual findings)