NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LG ELECTRONICS, INC.,
Appellant
v.
CONVERSANT WIRELESS LICENSING S.A.R.L.,
Appellee
______________________
2017-2028, 2017-2029
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-1984, IPR2015-1985.
--------------------------------------------------
CONVERSANT WIRELESS LICENSING S.A.R.L.,
Appellant
v.
APPLE INC.,
Appellee
______________________
2018-1185, 2018-1186
______________________
2 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01898, IPR2015-01899.
______________________
Decided: January 25, 2019
______________________
RYAN C. MORRIS, Sidley Austin LLP, Washington, DC,
argued for appellant in 17-2028. Also represented by
CARTER GLASGOW PHILLIPS, DANIEL HAY; PETER H. KANG,
Palo Alto, CA; JAMES SUH, LG Electronics Inc., Seoul,
Korea.
KAYVAN B. NOROOZI, Noroozi PC, Santa Monica, CA
argued for appellant in 18-1185. Also represented by
MARC AARON FENSTER, REZA MIRZAIE, Russ August &
Kabat, Los Angeles, CA; WAYNE MICHAEL HELGE, Da-
vidson Berquist Jackson & Gowdey, LLP, McLean, VA.
BENJAMIN T. WANG, Russ August & Kabat, Los Ange-
les, CA, argued for appellee in 17-2028. Also represented
by MARC AARON FENSTER, ADAM S. HOFFMAN, REZA
MIRZAIE; WAYNE MICHAEL HELGE, Davidson Berquist
Jackson & Gowdey, LLP, McLean, VA; KAYVAN B.
NOROOZI, Noroozi PC, Santa Monica, CA.
DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP,
Washington, DC, argued for appellee in 18-1185. Also
represented by SCOTT ANTHONY MCKEOWN; CHRISTOPHER
M. BONNY, East Palo Alto, CA.
______________________
Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
O’MALLEY, Circuit Judge.
Apple Inc. and LG Electronics, Inc. separately peti-
tioned for inter partes review of U.S. Patent Nos.
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 3
8,434,020 and 8,713,476, assigned to Conversant Wireless
Licensing S.A.R.L. The Patent Trial and Appeal Board
(“Board”) instituted review of both petitions and issued
final written decisions upholding the LG-challenged
claims as not obvious over
U.S. Patent No. 6,415,164
(“Blanchard”) and finding the Apple-challenged claims
unpatentable as obvious over
U.S. Patent No. 7,225,409
(“Schnarel”), in combination with
U.S. Patent No.
6,993,362 (“Aberg”), and
U.S. Patent No. 6,593,945 (“Na-
son”). Final Written Decision (Paper 41), LG Elecs., Inc.
v. Core Wireless Licensing S.A.R.L., IPR2015-1984 & -
1985 (P.T.A.B. Mar. 15, 2017); Final Written Decision
(Paper No. 42), Apple, Inc. v. Core Wireless S.A.R.L.,
IPR2015-1898 & -1899 (P.T.A.B. Mar. 15, 2017). LG and
Conversant appeal the Board’s decisions, respectively.
Because we agree with the Board’s decision invalidat-
ing the Apple-challenged claims in light of Schnarel and
Aberg and its decision upholding the LG-challenged
claims over Blanchard, we affirm.
I. BACKGROUND
A. The ’020 and ’476 Patents
The ’020 and ’476 patents, both titled “Computing De-
vice with Improved User Interface for Applications,” share
a nearly identical specification and are directed toward
solving problems with small display screens on computing
devices. Due to the more limited space on smaller display
screens, data and functionality are typically divided into
many layers or views, prohibiting users from being able to
“navigate quickly and efficiently to access data and acti-
vate a desired function.” ’020 patent, col. 1 ll. 27–29.
The patents tackle these small screen limitations by
creating an “application summary” or “application sum-
mary window” that can be reached directly from the main
menu on the display. The “application summary window”
allows the user to view a limited list of common functions
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 5
summary window displays a limited list of at
least one function offered within the first ap-
plication, each function in the list being se-
lectable to launch the first application and
initiate the selected function, and wherein the
application summary window is displayed
while the application is in an unlaunched
state.
Id. at col. 5 ll. 33–43. Claim 1 of the ’476 patent is nearly
identical to claim 1 of the ’020 patent, but, rather than
reciting an “application summary window” and a limited
list of “functions,” claim 1 of the ’476 patent discloses an
“application summary” and a limited list of “data.” ’476
patent, col. 5 l. 59–col. 6 l. 3.
B. The Prior Art
Three prior art references are at issue in this appeal:
(1) Blanchard, (2) Schnarel, and (3) Aberg. 1 All three
references are patents aimed at optimizing screen space
on small displays. Blanchard, titled “Arrangement for
Dynamic Allocation of Space on a Small Display of a
Telephone Terminal,” discloses an interactive telephone
interface that uses a series of menus and sub-menus
within a “parent menu.” Blanchard, col. 3 ll. 21–25, 54–
58, col. 4 ll. 12–14. As shown in Fig. 3 below, the parent
menu contains five applications—Home, Phone Book,
Mailbox, Security, and Tools—that are each allocated
their own screen. See
id. at col. 3 ll. 3–9, 54–58.
1 The Board additionally found the Apple-
challenged claims unpatentable as obvious over Nason.
Because we affirm the Board’s decisions based on
Schnarel in combination with Aberg, we do not reach the
parties’ arguments regarding Nason.
6 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
When a user scrolls to a certain application screen,
she is presented with different selectable menu items,
such as the ability to “view entries” in the Phone Book
application or change “phone settings” in the Tools appli-
cation. Blanchard, col. 4 ll. 17–30, Fig. 3. Each menu
within an application, moreover, can be “dynamically
varied for presentation of various types of user infor-
mation.”
Id. at col. 6 ll. 32–33.
Schnarel, titled “Graphical User Interface for a Screen
Telephone,” describes a graphical user interface imple-
mented as a “start” or “home” screen on a web telephone
or other telephony device. Schnarel, col. 4 ll. 18–22. The
“home” screen is broken into multiple display areas,
including a pane area, an application selection area (or
application button bar), and a call slip area, shown in Fig.
1, below.
Id. at col. 4 ll. 34–37.
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 7
The pane area (102) comprises different windows “de-
signed to allow customization of the start screen,” includ-
ing a “message pane” that notifies users of and allows
quick access to new messages, and a “task pane” that
allows quick access to device features, such as “speed dial”
and “write e-mail.”
Id. at col. 5 ll. 8–9, 12–13, 51–52, col.
6 ll. 27–34. The application program selection area (104)
contains multiple control buttons “that enable a user to
select an application program, such as a web browser,
address book, or answering machine/e-mail message
retrieval application.”
Id. at col 2 ll. 23–26. Finally, the
call slip area (106) displays elements associated with the
telephone line.
Id. at col. 4 ll. 56–59.
Aberg, titled “Portable Communication Apparatus
Having a Hierarchical Menu System and a Dynamic
Menu,” describes a dynamic hierarchical menu system for
portable communication devices. Aberg, col. 1 ll. 7–13.
Aberg’s hierarchical menu system includes three levels of
menus: top-level menus, sub-level menus, and selectable
menu items, shown below in Fig. 3.
Id.
8 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
Aberg teaches that the “essence” of its invention “lies
in the provision of the SPECIAL top-level menu 300,
which is dynamic (the contents may be modified by the
user) and is accessible through the normal menu system.”
Id. at col. 5 ll. 62–65, col. 4 ll. 34–35. While the “special”
menu is initially described as a “top-level menu,” Aberg
teaches that it “may be located anywhere further down
the menu hierarchy.”
Id. at col. 7 ll. 26–29. When the
user selects a menu item from the “special” menu, the
“corresponding function will be invoked, in precisely the
same manner as if the particular menu item were selected
via any of the regular menus 100, 200, etc., elsewhere in
the menu system.”
Id. at col. 6 ll. 19–24.
C. Procedural History
Apple petitioned for inter partes review on September
12, 2015 after being sued by Conversant in the Eastern
District of Texas. Apple asserted that claims 1, 2, 6, 8, 10,
11, 13, and 16 of the ’020 patent and claims 1, 4, 7–9, 20,
28, and 29 of the ’476 patent were unpatentable over
multiple prior art references, including, as relevant to this
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 9
appeal, Schnarel, alone or in combination with Aberg, and
Nason (the “Apple IPRs”). The Board instituted on both
grounds, ultimately concluding in its Final Written Deci-
sions that the challenged claims were unpatentable as
obvious over Schnarel in combination with Aberg (but not
Schnarel alone) and Nason.
LG petitioned for inter partes review on September 26,
2015 after being sued for patent infringement in the
Eastern District of Texas. LG challenged most of the
same claims as Apple, asserting that claims 1, 2, 5–8, 10,
11, 13, and 16 of the ’020 patent and claims 1, 4–6, 8, 9,
20, 26, 27, and 29 of the ’476 patent were unpatentable as
obvious over Blanchard and Schnarel (the “LG IPRs”).
The Board instituted only on Blanchard. 2 On March 15,
2017, the Board issued its Final Written Decisions finding
that LG failed to prove that Blanchard disclosed all
limitations of the patents because Blanchard did not
disclose the “limited list” limitation.
Conversant and LG timely appealed. Conversant ar-
gues that Schnarel fails to disclose the “unlaunched state”
limitation and that a person of skill in the art would not
be motivated to combine Schnarel with Aberg. LG argues
that the Board wrongly construed the term “limited list”
2 Five days prior to oral argument, LG submitted a
notice of supplemental authority to address the effect of
SAS Institute, Inc. v. Iancu,
138 S. Ct. 1348 (2018) on its
appeal, arguing that, if we did not vacate and remand the
Board’s decisions regarding Blanchard, we should remand
for the Board to address Schnarel. We decline LG’s
request. Not only is the request untimely since LG failed
to justify its eight-month delay in raising the issue, but
LG never filed a motion to remand predicated on SAS.
The Board expressly found in the Apple IPR, moreover,
that Schnarel standing alone did not render the chal-
lenged claims obvious.
10 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
and that Blanchard discloses that limitation. We have
jurisdiction over both appeals pursuant to
35 U.S.C.
§ 141(c) and
28 U.S.C. § 1295(a)(4).
II. STANDARD OF REVIEW
Claim construction and obviousness are questions of
law with factual underpinnings. We, therefore, review
the Board’s ultimate legal conclusions de novo and any
antecedent factual determinations for substantial evi-
dence. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S. Ct.
831, 841 (2015); Paice LLC v. Ford Motor Co.,
881 F.3d
894, 902 (Fed. Cir. 2018).
Within the obviousness context, whether a motivation
to combine references exists is a factual issue reviewed for
substantial evidence. See In re Hyon,
679 F.3d 1363,
1365–66 (Fed. Cir. 2012); In re NuVasive, Inc.,
842 F.3d
1376, 1381–82 (Fed. Cir. 2016). Substantial evidence is
“such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.” In re NuVa-
sive, 842 F.3d at 1379–80.
III. DISCUSSION
A. Conversant’s Appeal
Conversant argues that the Board’s Schnarel-based
obviousness findings in the Apple IPRs suffer two flaws:
(1) Schnarel does not disclose the “unlaunched state”
limitation; and (2) a person of ordinary skill in the art
would not be motivated to combine Schnarel with Aberg
to satisfy the “reached directly” limitation. Neither
argument is persuasive.
First, Conversant never argued before the Board that
Schnarel does not disclose the “unlaunched state” limita-
tion, despite Apple asserting that this limitation was
disclosed by Schnarel in its petitions and despite the
Board stating in its institution decisions that the parties’
only dispute involved the “reached directly” limitation.
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 11
See J.A. 225, 312, 2630. 3 Conversant has, therefore,
waived this argument on appeal.
Despite conceding during oral argument that it never
raised this limitation below, Conversant contends that,
because “th[e] issue was decided below,” it is preserved for
appeal. Oral Argument at 5:40, Conversant Wireless
Licensing v. Apple Inc., http://oralarguments.cafc.uscourts.
gov/default.aspx?fl=2018-1185.mp3; Conversant Reply Br.
at 33. But, there was no issue for the Board to decide
regarding whether this limitation was disclosed in
Schnarel. As mentioned above, Apple asserted the limita-
tion was satisfied and Conversant failed to contest that
assertion. The Board, therefore, relied on Apple’s peti-
tions in finding this limitation satisfied. J.A. 42, 114. An
issue cannot be preserved for appeal merely because the
Board finds it uncontested. See In re NuVasive, Inc.,
841
F.3d 966, 974 (Fed. Cir. 2016) (The Board is “not required
to address undisputed matters” or arguments about
limitations with which it was never presented.). And,
while Conversant faults the Board for its limited analysis
as to how Schnarel satisfies this limitation, the Board’s
analysis is more than “commensurate with” Conversant’s
treatment of the issue. See Novartis AG v. Torrent
Pharms. Ltd.,
853 F.3d 1316, 1328 (Fed. Cir. 2017).
Second, substantial evidence supports the Board’s
finding regarding the motivation to combine Schnarel and
Aberg. The Board found that a person of ordinary skill in
the art would have been motivated to reformat the mes-
3 All references to the Joint Appendix in this sub-
section refer to Conversant Wireless Licensing v. Apple
Inc., No. 2018-1185 (Fed. Cir. Aug. 16, 2018), ECF No. 43,
while all references to the Joint Appendix in the following
subsection, see infra Section III.B, refer to LG Electronics,
Inc. v. Conversant Wireless Licensing, No. 2017-2028 (Fed.
Cir. Apr. 23, 2018), ECF No. 52.
12 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
sages pane of Schnarel into a “special” menu button, as
disclosed in Aberg, placed in Schnarel’s application button
bar “to deal with the problems of small screens.” J.A. 27,
100. The Board explained that this combination “would
have retained many of the benefits of Schnarel’s messages
pane” while allowing “it to be used with smaller screens.”
J.A. 27, 100. It is undisputed that combining Schnarel
with Aberg in this manner satisfies the “reached directly”
limitation of the claims. Conversant only challenges
whether a person of ordinary skill in the art would be
motivated to combine these references in the first place.
Conversant argues that the Board’s reasoning—that
combining the references “deal[s] with the problems of
small screens”—is inadequate because there is no support
in either reference for (1) reformatting the message pane
into a “special” button on the application button bar or
(2) creating a button on the application button bar that,
contrary to the other application bar buttons, would not
launch a specific application. According to Conversant,
the Board improperly relied on hindsight in reaching its
conclusion. We disagree.
Schnarel and Aberg are both directed to solving prob-
lems associated with the limited screen display of mobile
devices through summary presentation (e.g., in Schnarel,
breaking the display into “panes” and in Aberg, using a
hierarchical menu). See Schnarel, col. 1 ll. 19–20, 31–35;
Aberg, col. 1 ll. 31–44, col. 2 ll. 36–40; see also J.A. 1161
(Apple’s expert testifying that the references are “in the
same field of art (relating to GUIs/menu design) and teach
displaying summary windows on mobile telephones that
include different applications”). The fact that the refer-
ences are directed to the same field of art helps to support
the Board’s finding that a person of ordinary skill in the
art would be motivated to combine their teachings in
creating a device that would receive the benefits of
Schnarel’s message pane while minimizing the amount of
space used on the screen. See Tyco Healthcare Grp. LP v.
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 13
Ethicon Endo-Surgery, Inc.,
774 F.3d 968, 978 (Fed. Cir.
2014) (finding motivation to combine where references are
“clearly within a common field of endeavor”). More specif-
ically, as the Board found, Aberg’s “special” menu “fills
the gap” left open by Schnarel by disclosing a way to
minimize the space used by Schnarel’s message pane
without losing the advantages associated therewith. See
J.A. 27, 100; see also J.A. 213–15. Apple’s expert, moreo-
ver, opined that modifying Schnarel to utilize Aberg’s
“special” menu was well within the level of skill in the art
at the time of the invention, and that such a combination
“would have amounted to a predictable variation resulting
from design incentives, not any inventive concept.” J.A.
30, 103, 1162.
Conversant’s arguments to the contrary are not per-
suasive. While Conversant argues that there is no reason
to place the “special” menu directly in Schnarel’s applica-
tion button bar, Schnarel only discloses three areas—the
message pane area, the application button bar, and the
call slip area. Placing the “special” menu anywhere but
the application button bar (or simply removing it as
Conversant contends) would not advance either refer-
ence’s goal of decreasing screen usage while still allowing
users to “quickly discover whether or not they have new
messages and quickly access these new messages.” See
Schnarel, col. 6 ll. 32–34. And, Aberg itself teaches that
the “special” menu “may be located anywhere further
down the menu hierarchy.” Aberg, col. 7 ll. 26–29.
That the “special” menu button would launch the
message pane, not an application, does not negate the
motivation to combine. Schnarel teaches that the “prima-
ry functions” of the application button bar “are to inform
the user of all applications that are available to them and
to provide a vehicle for launching those applications.”
Schnarel, col. 9 ll. 4–6. Apple’s proposed combination
satisfies these functions by using the “special” menu
button to inform the user of available functions (the
14 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
message pane) and the ability to launch that function by
clicking the button. Schnarel also discloses that the pane
area, including the message pane, “is designed to allow
customization” and that windows within the display may
be “collapsed.” Schnarel, col. 3 ll. 14–17, col. 5 ll. 7–25,
col. 9 ll. 35–40. Accordingly, we conclude substantial
evidence supports the Board’s finding that a person of
ordinary skill in the art would be motivated to combine
Aberg’s “special” menu with Schnarel’s message pane,
thereby satisfying the “reached directly” limitation of the
claims. 4
B. LG’s Appeal 5
On appeal, LG contends that the Board:
(1) erroneously construed the term “limited list;” and
4 Conversant does not raise any argument on ap-
peal specific to the asserted dependent claims. We affirm
the Board’s findings with respect to those claims as well.
5 We recognize that our decision to affirm the
Board’s findings in the Apple IPRs will impact the district
court proceedings between LG and Conversant. See
Fresenius USA, Inc. v. Baxter Int’l, Inc.,
721 F.3d 1330,
1340 (Fed. Cir. 2013). Given our decision, only certain
dependent claims at issue in the LG IPRs remain patent-
able. And, of those remaining dependent claims, none are
asserted against LG in the pending district court litiga-
tion between LG and Conversant. Conversant, thus,
suggested at oral argument that, to the extent we affirm
the Board’s decisions in the Apple IPRs, it may have no
remaining stake in the LG appeal. Oral Argument at
11:25, LG Elecs., Inc. v. Conversant Wireless Licensing,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-2028.mp3. LG has not said the same about its own
stake. Given that our decision in the Apple IPRs is not
yet final, we choose to address the parties’ arguments
regarding the LG IPRs.
LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING 15
(2) ignored evidence establishing that Blanchard discloses
a “limited list” of functions or data as required by the
claims. Conversant disagrees and further contends that
the Board’s determinations can be affirmed on the sepa-
rate ground that LG’s petitions were wholly conclusory.
In its Final Written Decisions, the Board found that
“[n]either party propose[d] a construction” for the term
“limited list,” but that both parties appeared to agree that
it required that “any functions shown in the ‘limited list’
are fewer than all the functions available in an applica-
tion.” J.A. 5–6; see also J.A. 22–23 (as to the ’476 patent,
finding the parties to agree that the phrase required
“fewer than all the data or functions available in an
application”). Because that understanding was supported
by the claims and specification, and because neither party
disputed it, the Board adopted it as the proper construc-
tion. J.A. 6–7, 23–24. Turning to the merits, the Board
found that LG failed to establish that Blanchard disclosed
a “limited list” of data or functions, as LG failed to prove
what other functions or data were offered by the applica-
tions disclosed in Blanchard. J.A. 10–14, 28–32.
LG has failed to prove that the asserted claims are
unpatentable as obvious in light of Blanchard. First, the
Board properly construed the term “limited list.” While
LG contends that the phrase must be tied to what is
displayed on a device screen, the claims, on their face,
tether the “limited list” to the application summary
window (or summary window), not the screen display.
See ’020 patent, col. 5 ll. 38–40 (“. . . wherein the applica-
tion summary window displays a limited list of at least
one function offered within the first application”); ’476
patent, col. 5 ll. 63–65 (“. . . wherein the application
summary displays a limited list of data offered within the
one or more applications”). The specifications support
this understanding and emphasize that “the summary
does not have to be presented within any kind of frame.”
See ’020 patent at col. 3 ll. 63–66. And, as the purpose of
16 LG ELECS., INC. v. CONVERSANT WIRELESS LICENSING
the inventions are to allow a user to more efficiently view
“common” or “core” functions or data without first navi-
gating through various steps, it follows that the “limited
list” be limited by which functions the user deems “com-
mon” or “core,” not by which functions can be viewed on
one screen. Finally, as the Board acknowledged, both
parties’ experts at least implicitly agreed on this construc-
tion. See J.A. 6, 23.
Second, applying this construction, the Board properly
determined that LG failed to meet its burden to prove
that Blanchard renders the asserted claims unpatentable.
While LG contends that the Board ignored substantial
evidence related to Blanchard’s disclosures, LG failed to
present this evidence to the Board. And, the arguments
LG did preserve rely on entirely conclusory petitions. See
J.A. 70–71, 114–15. As the Board found, LG “provide[d]
no evidence or argument tying the allegedly missing
functions to any particular application or any particular
application summary window” and, instead, asked the
Board “to speculate about what Blanchard does and
where those functions are offered.” J.A. 12, 29–30. Ac-
cordingly, we affirm the Board’s decisions upholding the
patents in light of Blanchard.
IV. CONCLUSION
For the foregoing reasons, we affirm the Board’s de-
terminations invalidating the Apple-challenged claims in
light of Schnarel in combination with Aberg and uphold-
ing the LG-challenged claims over Blanchard.
AFFIRMED
COSTS
Costs to the appellees.
