Case: 22-2156 Document: 58 Page: 1 Filed: 04/11/2024
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`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GUI GLOBAL PRODUCTS, LTD., DBA GWEE,
`Appellant
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Appellees
`______________________
`
`2022-2156, 2022-2157, 2022-2158, 2022-2159
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2021-
`00335, IPR2021-00336, IPR2021-00337, IPR2021-00338.
`______________________
`
`Decided: April 11, 2024
`______________________
`
`JOHN J. EDMONDS, Edmonds & Schlather, PLLC, Hou-
`ston, TX, argued for appellant. Also represented by
`STEPHEN F. SCHLATHER; ALISTAIR B. DAWSON, PARTH GEJJI,
`Beck Redden LLP, Houston, TX.
`
` ALI REZA SHARIFAHMADIAN, Arnold & Porter Kaye
`Scholer LLP, Washington, DC, argued for appellees. Also
`represented by JIN-SUK PARK.
` ______________________
`
`

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`Case: 22-2156 Document: 58 Page: 2 Filed: 04/11/2024
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`2
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`GUI GLOBAL PRODUCTS, LTD. v.
` SAMSUNG ELECTRONICS CO., LTD.
`
`
`Before PROST, SCHALL, and REYNA, Circuit Judges.
`PROST, Circuit Judge.
`Samsung Electronics Co., Ltd. and Samsung Electron-
`ics America, Inc. (collectively, “Samsung”) petitioned for in-
`ter partes review (“IPR”) of all claims of U.S. Patent
`Nos. 10,259,020 (“the ’020 patent”), 10,259,021 (“the ’021
`patent”), 10,562,077 (“the ’077 patent”), and 10,589,320
`(“the ’320 patent”). In four final written decisions, the Pa-
`tent Trial and Appeal Board (“Board”) determined that all
`claims were unpatentable over the asserted prior art.
`Samsung Elecs. Co. v. GUI Glob. Prods., Ltd., No. IPR2021-
`00335, 2022 Pat. App. LEXIS 3359 (P.T.A.B. June 29,
`2022) (“’335 Decision”); Samsung Elecs. Co. v. GUI Glob.
`Prods., Ltd., No. IPR2021-00336, 2022 WL 2252459
`(P.T.A.B. June 22, 2022) (“’336 Decision”); Samsung Elecs.
`Co. v. GUI Glob. Prods., Ltd., No. IPR2021-00337, 2022 WL
`2252561 (P.T.A.B. June 22, 2022) (“’337 Decision”); Sam-
`sung Elecs. Co. v. GUI Glob. Prods., Ltd., No. IPR2021-
`00338, 2022 WL 2252461 (P.T.A.B. June 22, 2022) (“’338
`Decision”). GUI Global Products, Ltd. d/b/a Gwee (“Gwee”)
`appeals each final written decision. We affirm.
`BACKGROUND
`I
`The ’020, ’021, ’077, and ’320 patents share a specifica-
`tion.1 These patents disclose, among other things, a “func-
`tionality of being able to activ[ate] magnetic switches on
`devices having such switches.” ’020 patent col. 11 ll. 54–56.
`One embodiment “is a switching device for use [with] a
`portable electronic device having a view screen, a switch
`for turning the portable device off and on that can be
`
`
`1 For convenience, we cite only the ’020 patent spec-
`ification.
`
`

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`GUI GLOBAL PRODUCTS, LTD. v.
`SAMSUNG ELECTRONICS CO., LTD.
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`activated or deactivated by the application of a magnetic
`field and at least one case.” Id. at col. 17 ll. 45–49. Exam-
`ples of the portable electronic device include “tablet com-
`puters, laptop computers, portable DVD players, and the
`like.” Id. at col. 17 ll. 51–52. Figure 24 provides an illus-
`tration of one such portable electronic device (tablet com-
`puter 2400) with a switching device (2401):
`
`Id. at Fig. 24; see also id. at col. 17 ll. 63–67.
`
`Claim 1 of the ’020 patent is independent and recites:
`1. A system comprising:
`a portable switching device coupled to a portable
`electronic device;
`wherein:
`the switching device and the electronic de-
`vice are configured to selectively couple to
`each other employing magnetic force from
`a first magnet disposed within the switch-
`ing device;
`
`

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`GUI GLOBAL PRODUCTS, LTD. v.
` SAMSUNG ELECTRONICS CO., LTD.
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`the switching device comprises a first case;
`the electronic device comprises a second
`case and an electronic circuit that is re-
`sponsive to the switching device;
`the electronic device comprises at least one
`element selected from the group consisting
`of beveled edges, ridges, recessed areas,
`grooves, slots, indented shapes, bumps,
`raised shapes, and combinations thereof;
`configured to correspond to compl[e]men-
`tary surface elements on the switching de-
`vice;
`the portable switching device is configured
`to activate, deactivate, or send into hiber-
`nation the portable electronic device; and
`when coupled, the second case functions to
`protect the first case.
`Id. at claim 1 (emphasis added). Claim 1 of the ’077 and
`’320 patents also recites an additional limitation that “the
`electronic device plays . . . a remote device.” ’077 patent
`claim 1; ’320 patent claim 1. Claim 1 of each of the four
`patents does not otherwise have relevant differences for
`the purposes of these appeals. All patents also have de-
`pendent claims that recite the switching device or the elec-
`tronic device being “wireless earplugs.” ’020 patent claim
`10; ’021 patent claim 10; ’077 patent claim 11; ’320 patent
`claim 11.
`
`II
`In each IPR, Samsung presented obviousness grounds
`based on Kim.2 Samsung relied on what it referred to as
`“Figure A,” a schematic representation of Kim’s combined
`
`
`2 U.S. Patent App. Pub. No. 2010/0227642 (“Kim”).
`
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`teachings that Samsung drew, as the primary basis for ob-
`viousness. The Board found that Kim teaches “Figure A”
`and also that “Figure A” would have been an obvious vari-
`ation of Kim’s disclosures. ’335 Decision, 2022 Pat. App.
`LEXIS 3359, at *11–26.3 For the claims with the “wireless
`earplug” limitation, Samsung relied on a combination of
`Kim and Koh.4 The Board found that a skilled artisan
`would have been motivated to combine Kim and Koh. Id.
`at *42–47. For the “switching device” limitation, the Board
`found that Kim teaches one device switching, or causing a
`change in the operation of, another device. Id. at *27–28.
`The Board also found that Kim teaches the “plays . . . a re-
`mote device” limitation in claim 1 of the ’077 and ’320 pa-
`tents. ’337 Decision, 2022 WL 2252561, at *18; ’338
`Decision, 2022 WL 2252461, at *19.
`Gwee timely appealed each final written decision. We
`have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`On appeal, Gwee argues that the Board lacked sub-
`stantial evidence for certain findings underlying its obvi-
`ousness conclusions and committed several Administrative
`Procedure Act (“APA”) violations. We take up Gwee’s obvi-
`ousness arguments and then address its APA arguments.
`I
`What the prior art discloses and whether a person of
`ordinary skill in the art would have been motivated to com-
`bine prior-art references are both factual questions that we
`review for substantial evidence. Intel Corp. v. PACT XPP
`Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Sub-
`stantial evidence is such relevant evidence as a reasonable
`
`
`3 Unless the Board’s treatment of the issues differs,
`for simplicity we cite only the ’335 Decision.
`4 Korean Patent Pub. No. 10-2008-0093178 (“Koh”).
`
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`GUI GLOBAL PRODUCTS, LTD. v.
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`mind might accept as adequate to support a conclusion.”
`Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324
`(Fed. Cir. 2017) (cleaned up).
`In order, we review Gwee’s arguments that: (1) Kim
`does not disclose or render obvious Figure A; (2) a skilled
`artisan would not have combined Kim and Koh; (3) Kim
`does not disclose the “switching device” limitation; and
`(4) Kim does not disclose the “plays . . . a remote device”
`limitation.
`
`A
`Gwee first argues that substantial evidence does not
`support the Board’s alternative findings that Kim discloses
`Samsung’s “Figure A” and that “Figure A” would have been
`an obvious variation of Kim’s disclosures.
`Kim discloses various watch-type embodiments. In one
`such embodiment, 100a depicts a first body and 100b de-
`picts a second body connected to the first body by hinge
`100d. The hinge can be configured so that the first body
`and second body can close. Kim also discloses connecting,
`or coupling, a third body to the first or second bodies. Kim
`discloses “[a] method of coupling the third body” 300 “to one
`of the first and second bodies,” J.A. 2966 ¶ 260, and de-
`scribes coupling third body 300 “on at least one side of the
`second body of the main device” using coupling member
`510, J.A. 2967 ¶ 261. This coupling can be accomplished
`using magnets.
`
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`SAMSUNG ELECTRONICS CO., LTD.
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`Citing these disclosures, Samsung’s petition stated
`that a skilled artisan “would have understood Kim to dis-
`close an embodiment of the mobile terminal in which a
`watch-type main device comprises a first body 100a con-
`nected to a second body 100b by a hinge 100d so that the
`first and second bodies can be opened or closed in a folding
`manner, and wherein the mobile terminal further com-
`prises a sub-device 300 detachably coupled to the second
`body 100b.” J.A. 412–13 (emphasis omitted). Samsung
`drew a schematic representation of this disclosure, which
`it called “Figure A”:
`
`J.A. 413. The Board found that Kim teaches the features
`illustrated in “Figure A” as compiled based on Kim’s teach-
`ings described above. ’335 Decision, 2022 Pat. App. LEXIS
`3359, at *11–15.
` Kim’s express statements provide substantial evidence
`supporting the Board’s finding, and Gwee’s arguments to
`the contrary are unpersuasive. Gwee first argues that the
`Board incorrectly found that Kim’s sub-device 300 could
`couple to the inside face of second body 100b because Kim
`
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`GUI GLOBAL PRODUCTS, LTD. v.
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`describes the sub-device as coupled in an “overlapping”
`manner. To Gwee, “‘overlapping’ means being placed on
`top, not below.” Reply Br. 7 (emphasis in original). Kim,
`however, discloses that the sub-device couples to “at least
`one side of the second body of the main device,” which
`teaches that the sub-device can couple to both the inside
`and outside faces of the second body. J.A. 2967 ¶ 261 (em-
`phasis added). Gwee also argues that coupling the sub-de-
`vice to the inside face of the second body would result in a
`physically impossible configuration. But Kim teaches ex-
`actly this configuration, and Gwee has not otherwise
`shown that this configuration was beyond a skilled arti-
`san’s capability.
`
`Samsung’s petition also presented an alternative the-
`ory that “Figure A” would have been an obvious variation
`of Kim’s teachings. Samsung referenced Kim’s folder-type
`embodiment, which discloses coupling a sub-device to an-
`other device using magnets. The petition stated that a
`skilled artisan “would have recognized that because of the
`similarities between Kim’s folder-type and watch-type em-
`bodiments, Kim’s disclosure with respect to” its folder-type
`embodiment “could have been adapted and applied to de-
`tachably couple sub-device 300 to the second body 100b of
`the watch-type embodiment in the manner shown in Fig-
`ure A.” J.A. 415 (emphasis omitted). Samsung also noted
`that Kim states that its “[e]mbodiments may be used singly
`and/or by being combined together.” J.A. 2961 ¶ 179. Re-
`lying on this evidence, the Board found that, in addition to
`its finding that Kim expressly teaches “Figure A,” a skilled
`artisan would have modified Kim to arrive at “Figure A.”
`’335 Decision, 2022 Pat. App. LEXIS 3359, at *15–26.
`Kim’s express statements again provide substantial ev-
`idence supporting the Board’s finding that a skilled artisan
`would have combined the watch-type and folder-type em-
`bodiments. Gwee presents two arguments against this
`finding. It first argues that Kim’s teaching that “[e]mbodi-
`ments may be used singly and/or by being combined
`
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`GUI GLOBAL PRODUCTS, LTD. v.
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`together” relates only to Kim’s “[e]mbodiments for a control
`method” described in the same paragraph. J.A. 2961
`¶ 179. Gwee’s argument misapprehends the obviousness
`inquiry, which is not limited to the express disclosures of
`the prior art but instead involves what “a person of ordi-
`nary creativity, not an automaton,” would understand from
`the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`421 (2007). The Board did not err when it found that a
`skilled artisan employing ordinary creativity would have
`applied Kim’s instructions to combine its watch-type and
`folder-type embodiments. Gwee also argues that the
`Board’s finding was based on what a skilled artisan could,
`not would, have done. Gwee relies on the Board’s observa-
`tion that a skilled artisan would have recognized that
`“Kim’s disclosure with respect to Figure 11B could have
`been adapted and applied to detachably couple sub-device
`300 to the second body 100b of the watch-type embodiment
`in the manner shown in Figure A.” ’335 Decision, 2022 Pat.
`App. LEXIS 3359, at *15–16 (emphasis added). But Gwee
`overlooks the Board’s finding that a skilled artisan “would
`have recognized the feasibility and desirability of modify-
`ing” Kim’s watch-type embodiment using the techniques
`for the folder-type embodiment. Id. at *16 (emphasis
`added).
` We thus affirm the Board’s findings that Kim discloses
`“Figure A” and that “Figure A” would have been an obvious
`variation of Kim’s disclosures.
`B
`Gwee next argues that substantial evidence does not
`support the Board’s finding that a skilled artisan would
`have been motivated to combine Kim and Koh.
`Kim discloses that its sub-device can be an “ear phone,”
`J.A. 2962 ¶ 194, but, as Samsung acknowledged, Kim “does
`not include a discussion of example techniques for coupling
`wireless earphone/headset sub-devices with a watch-type
`device,” J.A. 448. Samsung relied on Koh to close this gap.
`
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`GUI GLOBAL PRODUCTS, LTD. v.
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`Koh discloses that “a wireless headset [100] is coupled to
`an electronic device storage unit” in a watch-type device
`using magnets. J.A. 2983 ¶¶ 45–48. Samsung proposed
`coupling Koh’s wireless earphones to Kim’s second body
`100b using magnets. The Board found, based on these dis-
`closures, that a skilled artisan would have combined Kim
`and Koh in the manner Samsung proposed. ’335 Decision,
`2022 Pat. App. LEXIS 3359, at *42–47.
`Substantial evidence supports this motivation-to-com-
`bine finding. Kim teaches connecting earphones to a device
`that can be, for example, a watch-type device, and Koh sug-
`gests connecting earphones to a watch-type device using
`magnets (a connection method Kim also teaches). The
`Kim-Koh combination is the simple application of a known
`technique to address a known problem using prior-art ele-
`ments according to their established functions, and nothing
`indicates that the application of these teachings was be-
`yond a skilled artisan’s capability. See Intel Corp. v. Qual-
`comm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021).
` Gwee presents several arguments against this finding.
`We reject Gwee’s first argument that the combination of a
`watch-type embodiment and earphones involves “mental
`gymnastics.” Appellant’s Br. 53. Kim suggests adding ear-
`phones to a device and teaches that the device has a watch-
`type embodiment, and Koh discloses magnetically coupling
`earphones to a watch-type embodiment. Gwee also argues
`that Samsung’s “arrangement would sacrifice modularity,
`defeat the look-through functionality of the TOLED screen
`depicted in Kim’s Figure 15A device, and eliminate the de-
`sired dual-display capability of the watch-type device advo-
`cated by Kim.” Id. at 56. Kim provides, however, that
`these features are optional. Gwee further points to a pur-
`portedly better combination a skilled artisan would make,
`arguing that Samsung’s inferior Kim-Koh combination
`thus would not have been obvious. But it does not matter
`that there might be a better possible combination; a combi-
`nation only needs to be a “suitable option.” Intel, 21 F.4th
`
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`at 800 (emphasis in original) (cleaned up). Gwee finally
`argues that Samsung’s combination would remove certain
`features from Koh, but like its argument regarding lost fea-
`tures in Kim, nothing suggests that these features are key
`to or necessary in Koh.
`We thus conclude substantial evidence supports the
`Board’s finding that a skilled artisan would have combined
`Kim and Koh.
`
`C
`Gwee further argues that substantial evidence does not
`support the Board’s finding that Kim discloses the “switch-
`ing device” limitation.
`Kim states that “when the sub-device 300 is coupled to
`the main device 100, the main device 100 may automati-
`cally change its operation mode or an operation mode of the
`sub-device.” J.A. 2962 ¶ 195. The Board, relying on this
`disclosure, found that Kim teaches a switching device
`(main device 100) effecting a switching function (change in
`operation mode) of a different electronic device (sub-device
`300), and vice versa. ’335 Decision, 2022 Pat. App. LEXIS
`3359, at *27–28. Gwee argues that the Board’s finding is
`unsupported by substantial evidence, but Kim’s disclosures
`teach this limitation. Gwee also asserts that the Board
`rendered an incorrect implicit construction of “switching
`device.” Although unclear, it appears that Gwee argues
`that the “switching device” must effect a switching function
`on an “electronic device” that is a different device from the
`“switching device.” Appellant’s Br. 39–42. The Board’s
`findings still meet the “switching device” limitation under
`Gwee’s construction, so we need not resolve this dispute.
`We thus affirm the Board’s finding that Kim teaches
`the “switching device” limitation.
`
`

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`GUI GLOBAL PRODUCTS, LTD. v.
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`D
`Gwee finally argues that substantial evidence does not
`support the Board’s finding that Kim teaches the “plays . . .
`a remote device” limitation. Kim discloses that “[t]he user
`may enjoy music files (e.g., MP3 files or the like) stored in
`the personal computer by using the sub-device 300,” and
`that the sub-device can control another device. J.A. 2970
`¶ 344. The Board found that a skilled artisan would have
`combined this embodiment, which discloses playing a re-
`mote device, with Kim’s watch-type embodiment used in
`“Figure A,” based on Kim’s direct teaching that its embod-
`iments may be used singly and/or by being combined to-
`gether. ’337 Decision, 2022 WL 2252561, at *18; ’338
`Decision, 2022 WL 2252461, at *19. Kim’s disclosure that
`its sub-device can play music on another device is substan-
`tial evidence supporting this finding.
`We thus affirm the Board’s finding that Kim teaches
`the “plays . . . a remote device” limitation.
`II
`We next turn to Gwee’s APA arguments. We address,
`in order, Gwee’s arguments that the Board violated the
`APA by: (1) allowing Samsung to reengineer its “Figure A”
`in reply; (2) inadequately explaining its finding that a
`skilled artisan would have combined Kim and Koh;
`(3) adopting new theories to meet the “switching device”
`limitation; and (4) rendering inconsistent decisions for the
`“plays . . . a remote device” limitation.
`A
`Gwee first argues that the Board violated the APA by
`allowing Samsung to reengineer its “Figure A” device in its
`reply before the Board. Gwee contends that Samsung reen-
`gineered “Figure A” in reply when Samsung stated that
`“[t]here is nothing in Kim that would suggest to a [skilled
`artisan], much less require, that the folding watch-type
`embodiment of Figure A must have a hinge exactly as
`
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`depicted” in Kim’s watch-type embodiment. J.A. 4798
`(cleaned up). We disagree with Gwee that Samsung reen-
`gineered its “Figure A” device in reply. Rather, Samsung
`made a responsive argument in support of the same obvi-
`ousness theory in its petition—that a skilled artisan would
`have combined the teachings of Kim’s watch-type and
`folder-type embodiments. The Board did not violate the
`APA by considering Samsung’s responsive argument. See
`Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 705–06
`(Fed. Cir. 2020).
`
`B
` Gwee next argues that the Board violated the APA by
`inadequately explaining its reasoning in finding that a
`skilled artisan would have combined Kim and Koh. We dis-
`agree. The Board, after recounting Samsung’s arguments,
`explained why Gwee’s arguments were unavailing. ’335
`Decision, 2022 Pat. App. LEXIS 3359, at *42–47. The
`Board gave a reasoned explanation for its finding, and
`Gwee’s contention otherwise has no merit.
`C
`Gwee further argues that the Board substituted its
`own theories for Samsung’s to meet the “switching device”
`limitation. We disagree. In the IPR petitions for the ’021,
`’077, and ’320 patents, Samsung argued that Kim’s main
`device 100 switches Kim’s sub-device 300. J.A. 501–02,
`587–88, 671–72. The Board relied on the same theory. ’336
`Decision, 2022 WL 2252459, at *13 n.15; ’337 Decision,
`2022 WL 2252561, at *12 n.14; ’338 Decision, 2022 WL
`2252461, at *13 n.12. In the IPR petition for the ’020 pa-
`tent, Samsung argued that Kim’s sub-device 300 switches
`Kim’s main device 100. J.A. 418–19. The Board relied on
`the same theory. ’335 Decision, 2022 Pat. App. LEXIS
`3359, at *28 n.13. Gwee’s contrary arguments are, again,
`meritless.
`
`

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`GUI GLOBAL PRODUCTS, LTD. v.
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`D
`Gwee finally argues that the Board violated the APA
`by rendering inconsistent decisions regarding the “plays
`. . . a remote device” limitation. We disagree. In both the
`’337 Decision and the ’338 Decision, the Board relied on the
`same evidence to find that Kim taught this limitation in
`claim 1 of the ’077 and ’320 patents—the evidence we dis-
`cussed above. ’337 Decision, 2022 WL 2252561, at *18; ’338
`Decision, 2022 WL 2252461, at *19. Gwee focuses on minor
`differences in the language the Board used to argue that
`the Board’s reasoning was inconsistent, but these minor
`differences do not matter. The Board cited the same evi-
`dence to make the same finding, and we decline Gwee’s in-
`vitation to undo adequately explained, evidence-supported
`findings over inconsequential differences in word choice.
`CONCLUSION
`We have considered Gwee’s remaining arguments and
`find them unpersuasive. For the foregoing reasons, we af-
`firm.
`
`AFFIRMED
`
`