Case: 21-1813 Document: 79 Page: 1 Filed: 08/08/2023
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`NOTE: This disposition is nonprecedential.
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`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,
`
`

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`SHAMOON v. RESIDEO TECHNOLOGIES, INC.
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`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
`
`
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`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.
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`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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`SHAMOON v. RESIDEO TECHNOLOGIES, INC.
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`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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`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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`SHAMOON v. RESIDEO TECHNOLOGIES, INC.
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`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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`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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`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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`(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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`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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`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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`SHAMOON v. RESIDEO TECHNOLOGIES, INC.
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`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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`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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`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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`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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`SHAMOON v. RESIDEO TECHNOLOGIES, INC.
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`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
`
`

`

`Case: 21-1813 Document: 79 Page: 17 Filed: 08/08/2023
`
`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).
`
`

`

`Case: 21-1813 Document: 79 Page: 18 Filed: 08/08/2023
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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
`
`