Case: 18-1456 Document: 90 Page: 1 Filed: 09/25/2020
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`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC.,
`Appellant
`
`v.
`
`VOIP-PAL.COM, INC.,
`Appellee
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2018-1456, 2018-1457
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`01198, IPR2016-01201.
`______________________
`
`Decided: September 25, 2020
`______________________
`
`MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
`Washington, DC, argued for appellant. Also represented
`by BRIAN BUROKER, ANDREW WILHELM; RYAN IWAHASHI,
`Palo Alto, CA; PAUL R. HART, Erise IP, P.A., Greenwood
`Village, CO; ERIC ALLAN BURESH, ADAM PRESCOTT SEITZ,
`Overland Park, KS.
`
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`APPLE INC. v. VOIP-PAL.COM, INC.
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`
` LEWIS EMERY HUDNELL, III, Hudnell Law Group PC,
`Mountain View, CA, argued for appellee.
`
` DENNIS FAN, Appellate Staff, Civil Division, United
`States Department of Justice, Washington, DC, argued for
`intervenor. Also represented by MELISSA N. PATTERSON,
`ETHAN P. DAVIS; THOMAS W. KRAUSE, FARHEENA YASMEEN
`RASHEED, DANIEL KAZHDAN, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA.
` ______________________
`
`Before PROST, Chief Judge, REYNA and HUGHES, Circuit
`Judges.
`
`REYNA, Circuit Judge.
`In two consolidated appeals, Apple Inc. challenges the
`final written decisions of the Patent Trial and Appeal
`Board that certain claims of Voip-Pal.com, Inc.’s patents
`were not invalid for obviousness. Apple also challenges the
`Board’s sanctions determinations. We find no error in the
`Board’s non-obviousness determinations or in its sanctions
`rulings. We vacate and remand the Board’s final written
`decisions as to nineteen claims on mootness grounds. We
`affirm as to the remaining claims.
`BACKGROUND
`I
`Appellee Voip-Pal.com, Inc. (“Voip-Pal”) owns U.S. Pa-
`tent Nos. 8,542,815 (“the ’815 patent”) and 9,179,005 (“the
`’005 patent”) (collectively, the “Asserted Patents”), both of
`which are titled “Producing Routing Messages for Voice
`Over IP Communications.” The Asserted Patents describe
`the field of invention as “voice over IP communications and
`methods and apparatus for routing and billing” and relate
`to routing communications between two different types of
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`APPLE INC. v. VOIP-PAL.COM, INC.
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`networks—public and private. See ’815 patent at 1:12–13,
`1:15–21.
`In February 2016, Voip-Pal sued appellant Apple Inc.
`(“Apple”) for infringement of the Asserted Patents in the
`United States District Court for the District of Nevada.
`Voip-Pal.com, Inc. v. Apple Inc., No. 2:16-cv-260 (D. Nev.
`Feb. 9, 2016). In June 2016, Apple petitioned for inter
`partes review (“IPR”) of several claims of the Asserted Pa-
`tents in two separate proceedings before the Patent Trial
`and Appeal Board
`(“Board”)—IPR2016-01198 and
`IPR2016-01201. The Nevada district court stayed Voip-
`Pal’s infringement action pending the IPRs.
`In its IPR petitions, Apple argued that the claims were
`obvious over the combination of U.S. Patent No. 7,486,684
`B2 (“Chu ’684”) and U.S. Patent No. 8,036,366 (“Chu ’366”).
`Apple relied on Chu ’684 as a primary reference for its in-
`frastructure, call classifying, and call routing disclosures.
`Apple relied on Chu ’366 as a secondary reference for its
`caller profile and dialed digit reformatting disclosures.
`A panel of the Board (Benoit, Pettigrew, Margolies, JJ.)
`(“Original Panel”) instituted review in both proceedings.
`In June 2017, the Original Panel was replaced by a second
`panel (Cocks, Chagnon, Hudalla, JJ.) (“Interim Panel”) for
`reasons not memorialized in the record.
`During both IPR proceedings, Voip-Pal’s former Chief
`Executive Officer, Dr. Thomas E. Sawyer, sent six letters
`to various parties, copying members of Congress, the Pres-
`ident, federal judges, and administrative patent judges at
`the Board. Dr. Sawyer did not copy or send Apple the let-
`ters. The letters criticized the IPR system, complained
`about cancellation rates at the Board, and requested judg-
`ment in favor of Voip-Pal or dismissal of Apple’s petition in
`the ongoing Apple IPR proceedings. The letters did not dis-
`cuss the underlying merits of Apple’s IPR petitions.
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`APPLE INC. v. VOIP-PAL.COM, INC.
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`On November 20, 2017, the Interim Panel issued final
`written decisions in both actions, determining all claims to
`be not invalid as obvious over Chu ’684 and Chu ’366. In
`its final written decisions, the Interim Panel found that Ap-
`ple did not provide evidentiary support for Apple’s argu-
`ment on motivation to combine. Additionally, the Interim
`Panel credited Voip-Pal’s expert’s testimony that Chu ’684
`did not have, as Apple argued, a dialing deficiency.
`II
`Apple then moved for sanctions against Voip-Pal based
`on Sawyer’s ex parte communications with the Board and
`with the United States Patent and Trademark Office. Ap-
`ple argued that Voip-Pal’s ex parte communications vio-
`lated its due process rights and the Administrative
`Procedures Act. Apple requested that the Board sanction
`Voip-Pal by entering adverse judgment against Voip-Pal
`or, alternatively, by vacating the final written decisions
`and assigning a new panel to preside over “constitutionally
`correct” new proceedings going forward.
`After moving for sanctions, Apple appealed the Board’s
`final written decision to this court, giving rise to the instant
`consolidated appeals. Upon Apple’s motion, we stayed the
`appeals and remanded the cases for the limited purpose of
`allowing the Board to consider Apple’s sanctions motions.
`Apple Inc. v. Voip-Pal.com, Inc., Nos. 18-1456, -1457 (Fed.
`Cir. Feb. 21, 2018). For the sanctions proceedings, a new
`panel (Boalick, Bonilla, Tierney, JJ.) (“Final Panel”) re-
`placed the Interim Panel.
`The Final Panel determined that Voip-Pal engaged in
`sanctionable ex parte communications. The Final Panel
`rejected Apple’s request for a directed judgment and Ap-
`ple’s alternative request for new proceedings before a new
`panel. The Final Panel fashioned its own sanction, which
`provided that the Final Panel would preside over Apple’s
`petition for rehearing, which, according to the Final Panel,
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`“achieves the most appropriate balance when considering
`both parties’ conduct as a whole.” J.A. 71.
`The parties proceeded to panel rehearing briefing. The
`Final Panel denied Apple’s petition for rehearing because
`Apple had “not met its burden to show that in the Final
`Written Decision, the [Interim] panel misapprehended or
`overlooked any matter,” J.A. 86, and “[e]ven if [the Panel]
`were to accept [Apple’s] view of Chu ’684 . . . [the Panel]
`would not reach a different conclusion.” J.A. 82. Apple
`then moved our court to lift the limited stay. We lifted the
`stay and proceeded to briefing and oral argument. Apple
`Inc. v. Voip-Pal.com, Inc., Nos. 18-1456, -1457 (Fed. Cir.
`July 3, 2019). We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`
`DISCUSSION
`I
`Before turning to the merits of these appeals, we ad-
`dress a threshold jurisdictional issue Apple raised post-
`briefing. On June 8, 2020, prior to oral argument, Apple
`filed a post-briefing document in both appeals entitled
`“Suggestion of Mootness.” Apple Inc. v. Voip-Pal.com, Inc.,
`Nos. 18-1456 (Fed. Cir. June 8, 2020), ECF No. 79. In that
`submission, Apple contends that our recent ineligibility de-
`termination in Voip-Pal.com, Inc. v. Twitter, Inc., 798
`F. App’x 644 (Fed. Cir. 2020) (“Twitter”), renders the in-
`stant appeals moot and that we must vacate the Board’s
`underlying final written decisions and sanctions orders.
`For the reasons discussed below, we agree in part with Ap-
`ple.
`
`A. Twitter
`Shortly after the Interim Panel issued its final written
`decisions in December 2017, the parties agreed to lift the
`stay in the underlying district court litigation. See Voip-
`Pal.com, Inc. v. Apple Inc., No. 2:16-cv-260, ECF No. 37
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`APPLE INC. v. VOIP-PAL.COM, INC.
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`(D. Nev. Jan. 26, 2018). In October 2018, the Nevada dis-
`trict court litigation was transferred to the Northern Dis-
`trict of California, along with three other related cases in
`which Voip-Pal had filed similar complaints alleging in-
`fringement of the same patents. See Voip-Pal.com, Inc. v.
`Apple Inc., 375 F. Supp. 3d 1110, 1117 (N.D. Cal. 2019).
`The California district court required Voip-Pal to nar-
`row the number of asserted claims against all parties in all
`cases to the same maximum twenty claims. In March 2019,
`the district court identified two representative claims
`(claim 1 of the ’815 patent and claim 74 of the ’005 patent).1
`Apple and other defendants filed a consolidated motion to
`dismiss, arguing that the twenty asserted claims were in-
`eligible under 35 U.S.C. § 101. The district court granted
`the motion to dismiss, determining that the representative
`claims were patent ineligible. In March 2020, we affirmed
`the district court’s judgment that the asserted claims were
`patent ineligible. Twitter, 798 F. App’x at 645. We denied
`Voip-Pal’s rehearing request in Twitter.
`B. Overlapping Claims
`At oral argument, Apple argued, and Voip-Pal did not
`dispute, that these appeals are moot as to Claims 1, 7, 27,
`28, 72, 73, 92, and 111 of the ’815 patent and Claims 49,
`73, 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 patent
`(collectively, the “overlapping claims”).2 These nineteen
`overlapping claims were at issue in the underlying IPR pro-
`ceedings and were also deemed patent ineligible in Twitter.
`
`
`In the Apple IPR proceedings, the representative
`1
`claims were claim 1 of the ’815 and claim 1 of the ’005 pa-
`tent.
`2 See Oral Arg. at 18:06–10, 18:28–35, 19:23–47, No.
`2018-1456, http://www.cafc.uscourts.gov/oral-argument-
`recordings.
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`We agree that these overlapping claims are rendered moot
`in these appeals in light of Twitter.
`Because we have determined that the overlapping
`claims failed the Section 101 threshold in Twitter, Apple
`“no longer has the potential for injury, thereby mooting the
`[obviousness] inquiry” at issue in the instant appeals. Mo-
`menta Pharm., Inc. v. Bristol-Myers Squibb Co., 915 F.3d
`764, 770 (Fed. Cir. 2019) (“[W]hen the potential for injury
`has been mooted by events, the federal courts are deprived
`of jurisdiction.”). Thus, we vacate-in-part the Board’s final
`written decisions only as to these overlapping claims and
`direct the Board to dismiss Apple’s petitions as to these
`claims. See, e.g., United States v. Munsingwear, Inc., 340
`U.S. 36, 39–41 (1950) (noting that the “established practice
`. . . in dealing with a civil case from a court in the federal
`system which has become moot while [on appeal] is to re-
`verse or vacate the judgment below and remand with a di-
`rection to dismiss” (emphasis added)).3
`C. Nonoverlapping Claims
`We now turn to whether these appeals are moot as to
`the “nonoverlapping claims.” The nonoverlapping claims
`are the fifteen remaining claims at issue in the underlying
`IPR proceedings and were not part of the ineligibility
`
`
`3 We recognize that these appeals did not arise from
`a civil case in a federal court but rather from proceedings
`before an administrative agency. This difference in proce-
`dural history does not merit a different remedy. See, e.g.,
`PNC Bank Nat’l Ass’n v. Secure Axcess, LLC, 138 S. Ct.
`1982 (2018) (mem.) (ordering remand for Board to vacate
`order for mootness).
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`APPLE INC. v. VOIP-PAL.COM, INC.
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`determination in Twitter.4 Apple argues that the question
`of obviousness as to the nonoverlapping claims “appears to
`be moot” in light of Twitter because Apple faces no liability
`for infringing these claims. Suggestion of Mootness at 11
`(emphasis added). Apple argues that “[b]asic principles of
`claim preclusion (res judicata) preclude Voip-Pal from ac-
`cusing Apple” of infringing the nonoverlapping claims in
`future litigation, and thus, Apple can never face infringe-
`ment liability as to these claims. Id. According to Apple,
`Voip-Pal is precluded from asserting these fifteen nonover-
`lapping claims against Apple because they are “essentially
`the same” as the claims held patent ineligible in the Twit-
`ter appeal. Id. Apple also argues that Voip-Pal effectively
`conceded in the underlying district court litigation that the
`overlapping claims are essentially the same as the
`nonoverlapping claims when Voip-Pal dropped the latter
`claims from the litigation (at the request of the district
`court). We disagree with Apple’s assertion of claim preclu-
`sion.
`Under the doctrine of claim preclusion, “a judgment on
`the merits in a prior suit involving the same parties or their
`privies bars a second suit based on the same cause of ac-
`tion.” Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 326
`(1955) (internal quotation marks omitted). The determina-
`tion of the “precise effect of the judgment[] in th[e] [first]
`case will necessarily have to be decided in any such later
`actions that may be brought.” In re Katz Interactive Call
`Processing Pat. Litig., 639 F.3d 1303, 1310 n.5 (Fed. Cir.
`2011) (emphasis added). Apple acknowledges that any res
`judicata effect of a first proceeding is “an issue that only a
`future court can resolve.” Appellant’s Br. at 35 (citing
`
`
`4 The fifteen nonoverlapping claims are claims 34,
`54, 74, and 93 of the ’815 patent and claims 1, 24–26, 50,
`76, 79, 88, 89, 95, and 98 of the ’005 patent.
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`Matsushita Elec. Indus. Co. v. Epstein, 516 U.S. 367, 396
`(1996) (Ginsburg, J., concurring in part and dissenting in
`part) (“A court conducting an action cannot predetermine
`the res judicata effect of the judgment; that effect can be
`tested only in a subsequent action.”) (emphasis added)).
`Thus, any preclusive effects that Twitter could have
`against the same or other parties must be decided in any
`subsequent action brought by Voip-Pal. Until then, any de-
`termination we make as to whether Voip-Pal is claim pre-
`cluded from filing an infringement action concerning the
`nonoverlapping claims—claims that no court has deter-
`mined are patent ineligible—is advisory in nature and falls
`outside of our Article III jurisdiction. See Flast v. Cohen,
`392 U.S. 83, 96 (1968) (“[I]t is quite clear that the oldest
`and most consistent thread in the federal law of justiciabil-
`ity is that the federal courts will not give advisory opin-
`ions.”) (internal quotation marks omitted). The question of
`obviousness as to the nonoverlapping claims is thus not
`moot. On these grounds, we deny Apple’s request that we
`vacate the Board’s sanctions order as moot. We maintain
`jurisdiction over both appeals as to the nonoverlapping
`claims and now turn to the merits of the appeals.
`II
`Apple challenges the Board’s sanctions order and de-
`nial of rehearing on two grounds. First, Apple argues that
`the Board violated the Administrative Procedures Act
`(“APA”) and its due process rights when the Board imposed
`non-enumerated sanctions for Voip-Pal’s ex parte commu-
`nications. Second, Apple argues that the Board wrongly
`concluded that the challenged claims are not invalid for ob-
`viousness.
`We review the Board’s sanction decisions for an abuse
`of discretion. See Bennett Regulator Guards, Inc. v. Atlanta
`Gas Light Co., No. 2017-1555, 2020 WL 4743511, at *8
`(Fed. Cir. 2020). The Board abuses its discretion if the
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`sanction “(1) is clearly unreasonable, arbitrary, or fanciful;
`(2) is based on an erroneous conclusion of law; (3) rests on
`clearly erroneous fact findings; or (4) involves a record that
`contains no evidence on which the Board could rationally
`base its decision.” Abrutyn v. Giovanniello, 15 F.3d 1048,
`1050–51 (Fed. Cir. 1994). This court “review[s] contentions
`that rights of due process have been violated de novo.” Ad-
`ams v. Dep’t of Just., 251 F.3d 170 (Fed. Cir. 2000).
`We review the Board’s ultimate determination of non-
`obviousness de novo and its underlying factual findings for
`substantial evidence. WesternGeco LLC v. ION Geophysi-
`cal Corp., 889 F.3d 1308, 1326 (Fed. Cir. 2018).
`A. APA
`Apple argues that the Board violated the APA when
`the Board exceeded its authority under its own sanction
`regulations. According to Apple, upon determining that
`Voip-Pal’s ex parte communications were sanctionable, the
`Board was required to issue one of eight authorized sanc-
`tions under 37 C.F.R. § 42.12(b). Apple noted that the
`Board issued a sanction not explicitly provided by Section
`42.12(b). Thus, Apple argues, the Board exceeded its au-
`thority. We reject this argument.
`The provision at issue provides that:
`(a) The Board may impose a sanction against a
`party for misconduct, . . . .
`(b) Sanctions include entry of one or more of the
`following:
`(1) An order holding facts to have been es-
`tablished in the proceeding;
`(2) An order expunging or precluding a
`party from filing a paper;
`(3) An order precluding a party from pre-
`senting or contesting a particular issue;
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`(4) An order precluding a party from re-
`questing, obtaining, or opposing discovery;
`(5) An order excluding evidence;
`(6) An order providing for compensatory ex-
`penses, including attorney fees;
`(7) An order requiring terminal disclaimer
`of patent term; or
`(8) Judgment in the trial or dismissal of the
`petition.
`37 C.F.R. § 42.12 (emphasis added).
`Key here, Section 42.12(b) uses the term “include,”
`which signifies a non-exhaustive list of sanctions. See, e.g.,
`Marrama v. Citizens Bank of Mass., 549 U.S. 365, 373 &
`n.8 (2007) (determining statutory list of ten items preceded
`by term “including” to be “a nonexclusive list”); Talk Am.,
`Inc. v. Mich. Bell Tel. Co., 564 U.S. 50, 63 n.5 (2011) (deter-
`mining regulation using phrase “include, but are not lim-
`ited to,” to be “nonexhaustive”); see also Include, Black’s
`Law Dictionary (11th ed. 2019) (“The participle including
`typically indicates a partial list.”). Additionally, reading
`this regulatory provision as non-exhaustive is consistent
`with the context of the Board’s sanctioning regime, which
`affords the Board discretion to impose sanctions in the first
`place. See 37 C.F.R. § 42.12(a)(1) (providing that the Board
`“may impose a sanction” (emphasis added)); Rules of Prac-
`tice for Trials Before the Patent Trial and Appeal Board
`and Judicial Review of Patent Trial and Appeal Board De-
`cisions, 77 Fed. Reg. 48,612, 48,616 (Aug. 14, 2012) (provid-
`ing that “an ex parte communication may result in
`sanctions”) (second emphasis added). The use of “may” em-
`phasized above renders permissible and non-exhaustive
`use of the listed sanctions. Thus, contrary to Apple’s posi-
`tion, Section 42.12(b) does not limit the Board to the eight
`listed sanctions. Rather, the plain reading of Section
`42.12(b) allows the Board to issue sanctions not explicitly
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`provided in the regulation. We therefore hold that the
`plain reading of Section 42.12(b) provides the Board with
`discretion to issue sanctions and that the Board did not
`commit an APA violation when it issued a sanction not ex-
`plicitly listed under Section 42.12.
`To the extent Apple argues that the Board abused its
`discretion by not ordering a sanction of judgment in Apple’s
`favor, see Appellant’s Br. at 31, we reject this argument.
`“[A] sanction which may sound the death knell for im-
`portant [patent] rights and interests . . . should be used as
`a weapon of last, rather than first, resort.” Abrutyn, 15
`F.3d at 1053 (internal quotation marks and citation omit-
`ted). Additionally, “discretion implies a range of permissi-
`ble choices. As long as the tribunal’s choice falls within a
`reasonable range, it cannot constitute an abuse of discre-
`tion.” Id. Here, the Board’s decision to (a) allow Apple to
`petition for rehearing before a new panel, and (b) provide
`Apple with a meaningful opportunity to respond to Voip-
`Pal’s letters was a reasonable course of action and one we
`will not disturb.
`
`B. Due Process
`Apple also argues that the Board violated Apple’s right
`to due process by refusing to order a de novo proceeding
`before a new panel. We are not persuaded.
`First, Apple did not identify any property interests in
`the course of its due process arguments below. We con-
`clude that its arguments identifying property interests for
`the first time on appeal are waived. See Stone v. FDIC, 179
`F.3d 1368, 1374, 1377 (Fed. Cir. 1999) (noting that there
`can be no due process violation without the deprivation of
`a property interest); see also Patlex Corp. v. Mossinghoff,
`771 F.2d 480, 484 (Fed. Cir. 1985) (outlining factors to be
`analyzed when determining a due process violation, the
`first of which is “the private interest that will be affected
`by the official action”) (quoting Mathews v. Eldridge, 424
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`U.S. 319, 335 (1976)); Cleveland Bd. of Educ. v. Loudermill,
`470 U.S. 532, 542–46 (1985) (“The essential requirements
`of due process . . . are notice and opportunity to respond.”).
`In particular, Apple argues for the first time on appeal that
`the preclusive application of collateral estoppel of a final
`written decision necessarily constitutes a deprivation of
`Apple’s property interests and therefore entitles Apple to
`reversal here. Despite Voip-Pal’s statement in its response
`to Apple’s sanctions motion that “there is no property right
`at stake,” J.A. 1674, Apple did not avail itself of the oppor-
`tunity to address the issue in its reply. Apple also argues
`for the first time on appeal that the money it spent in re-
`questing IPR was a property interest. Apple failed to raise
`these arguments below, and thus it has waived these argu-
`ments on appeal. See, e.g., Sage Prods., Inc. v. Devon In-
`dus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997) (declining
`to consider new arguments raised for the first time on ap-
`peal).
`We also recognize that the Board introduced Voip-Pal’s
`six ex parte letters into the record and gave Apple an op-
`portunity to respond to these letters during the panel re-
`hearing stage before a new panel. Apple chose, however,
`not to address the substance of Voip-Pal’s letters—the very
`same letters that Apple claims “tainted” its IPR proceed-
`ings. See Appellant’s Br. at 36. Thus, we fail to see how
`the Board’s sanctions orders deprived Apple of due process.
`C. Non-Obviousness
`Apple also challenges the Board’s non-obviousness de-
`termination. Specifically, Apple argues that the Board le-
`gally and factually erred when it determined that Apple
`failed to establish a motivation to combine Chu ’684 with
`Chu ’366. We are not persuaded by Apple’s arguments.
`Apple’s underlying premise to combine the teachings of
`Chu ’684 with those of Chu ’336 was that a skilled artisan
`would have viewed Chu ’684’s interface as less “intuitive”
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`and less “user-friendly” than that of Chu ’366, and thus a
`skilled artisan would have a desire to improve Chu ’684’s
`system. In particular, Apple argued that Chu ’684’s system
`had a dialing deficiency that did not permit short-form
`phone number dialing but rather long-form, fully format-
`ted “E.164 numbers,” e.g., “+1-202-555-1234.” See Appel-
`lant’s Br. at 46. The Board rejected Apple’s argument,
`noting that Apple’s expert provided no “adequate support”
`and no “underlying evidentiary support” for the proposition
`that a skilled artisan would have regarded Chu ’684’s
`teachings as deficient.
`Apple argues on appeal that the Board legally erred in
`rejecting its motivation-to-combine argument by improp-
`erly applying the now-rejected teaching, suggestion, moti-
`vation test rather than the flexible obviousness analysis
`required under KSR International Co. v. Teleflex Inc., 550
`U.S. 398, 415 (2007). In particular, Apple faults the Board
`for rejecting its expert testimony that Chu ’684’s teachings
`were deficient for failure to provide “underlying eviden-
`tiary support for the proposition that [a POSITA] would
`have regarded Chu ’684’s teachings as deficient.” J.A. 19.
`We disagree with Apple.
`The Board did not fault Apple for not citing explicit
`“teachings, suggestions, or motivations to combine the
`prior art.” Appellant’s Br. at 50. Rather, the Board noted
`that Apple’s expert provided only “conclusory and insuffi-
`cient” reasons for combining Chu ’684 with Chu ’366 and
`failed to “articulate[] reasoning with some rational under-
`pinning.” J.A. 21. Thus, contrary to Apple’s position, the
`Board did not legally err but rather held Apple to the
`proper evidentiary standard. See In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
`cannot be sustained by mere conclusory statements; in-
`stead, there must be some articulated reasoning with some
`rational underpinning to support the legal conclusion of ob-
`viousness.”).
`
`

`

`Case: 18-1456 Document: 90 Page: 15 Filed: 09/25/2020
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`APPLE INC. v. VOIP-PAL.COM, INC.
`
`15
`
`Apple also argues that the Board factually erred by
`failing to consider that Chu ’366 provides explicit evidence
`of motivation to combine, “explaining that there is a desire
`to enter abbreviated numbers for local and national tele-
`phone calls.” Appellant’s Br. at 50. However, the Board
`considered Chu ’366’s teachings and cited material parts
`but rejected the premise that Chu ’684’s interface was any
`less intuitive or user-friendly than Chu ’366’s. The Board
`credited the unrefuted testimony of Voip-Pal’s expert, Dr.
`Mangione-Smith, who explained that Chu ’684’s operation
`as a public branch exchange (“PBX”) system was not “inad-
`equate or unintuitive.” J.A. 968–71 (Ex. 2016 ¶¶ 65–67).
`In particular, Dr. Mangione-Smith explained, “PBX’s pro-
`vided all the features of ordinary phones connected to the
`[public switched telephone network], and in addition, sup-
`ported the dialing of private extension numbers. The use
`of a prefix digit such as ‘9’ was not a deficiency but rather
`a simple way of supporting both [public switched telephone
`network] dialing and extension dialing.” J.A. 969–70 (Ex.
`2016 ¶ 66) (emphasis in original).5 We find no error in the
`Board’s decision to credit the opinion of Voip-Pal’s expert
`over Apple’s, and we do not reweigh evidence on appeal.
`Impax Labs. Inc. v. Lannett Holdings Inc., 893 F.3d 1372,
`1382 (Fed. Cir. 2018). Substantial evidence supports the
`Board’s finding that Chu ’684 did not disclose a dialing de-
`ficiency.
`
`CONCLUSION
`We have considered the parties’ remaining arguments
`and find them unpersuasive. We vacate the Board’s deter-
`minations that claims 1, 7, 27, 28, 72, 73, 92, and 111 of the
`
`5 The Board alternatively determined that even if
`there was a motivation to combine, the combination of Chu
`’684 and Chu ’366 still failed to render the challenged
`claims obvious. We do not address this alternative deter-
`mination.
`
`

`

`Case: 18-1456 Document: 90 Page: 16 Filed: 09/25/2020
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`16
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`APPLE INC. v. VOIP-PAL.COM, INC.
`
`’815 patent and claims 49, 73, 74, 75, 77, 78, 83, 84, 94, 96,
`and 99 of the ’005 patent are not invalid as obvious and
`remand to the Board to dismiss these claims as moot. We
`affirm the Board’s non-obviousness determinations as to
`the remaining claims. We also affirm the Board’s sanctions
`orders.
`AFFIRMED IN PART, VACATED AND REMANDED
`IN PART
`COSTS
`
`No costs.
`
`