by Dennis Crouch
Power2B, Inc. v. Samsung Elecs. Co., Ltd., Nos. 23-2184, 24-1399, 24-1400 (Fed. Cir. May 19, 2025)
Two key canons of claim construction are that of claim differentiation and claim term differentiation – each patent claim is presumed to have its own scope and coverage, as is each element of each claim. The use of different terms in different claims “connotes different meanings.” CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308 (Fed. Cir. 2000). But, these are not an incredibly strong presumptions, and the court has regularly construed different terms in separate claims to cover the same subject matter. See, Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322 (Fed. Cir. 2009) and Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005).
In its recent decision in Power2B v. Samsung, the Federal Circuit found another case where differing language did not differ the construction. Power2B, Inc. v. Samsung Elecs. Co., Ltd., Nos. 23-2184, 24-1399, 24-1400 (Fed. Cir. May 19, 2025). The patents at issue describe a handheld device that uses a light-emitting stylus with various functionality. The PTAB sided with petitioner Samsung on almost all claims of the two challenged patents: US7952570 and US8547364. But, a divided PTAB found that claim 20 of ‘364 patent had not been proven unpatentable, with the majority concluding that Samsung had not properly argued the “generating control signals by the input circuitry” limitation of claim 20. On appeal, Samsung argued that the Board abused its discretion because that claim 20 limitation was not materially different from claim 13’s “output indication” limitation, which Samsung had properly addressed, and that these different terms merely expressed the same concept. Samsung that nothing in the specification or claims identifies any difference between an “output indication” and a “control signal.”
Judge Dyk, writing for the majority, concluded that Samsung adequately addressed claim 20’s “control signals” limitation through its arguments regarding claim 13’s “output indication” limitation. The majority held that these limitations “do[] not materially differ” and rejected the Board’s determination that Samsung had failed to address this limitation. Here, Judge Dyk recognized that the wording was only “slightly different” and thus did not raise a different invalidity question. Rather, the majority found this case akin to Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004), where the court concluded that terms like “operatively connected” and “operatively associated” were “simply a case where the patentee used different words to express similar concepts.”
Judge Stark wrote in dissent — focusing on the procedural requirements for IPR petitions. His dissent emphasized that Samsung had not explicitly addressed the “generating control signals” limitation in its petition and, even after Power2B pointed out this deficiency in its Patent Owner Response, Samsung still made no effort to address the issue in reply.
We recognize that IPR petitions are designed as a streamlined mechanism that are almost unwaveringly defined by the initial petition. That strict approach helps ensure that the USPTO can reach its statutory 12-month goal while giving the patentee sufficient notice as to the arguments being presented. In his opinion, Judge Stark indicated this as follows: “it is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.'” quoting 35 U.S.C. § 312. He also noted that the majority’s claim construction analysis should have been led by Samsung before the Board, not for the first time on appeal. In other words, the dissent concluded that Samsung forfeited its opportunity to make this argument on appeal. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371 (Fed. Cir. 2023) (“Any argument not raised to the Board is forfeited, and we decline to consider it for the first time on appeal”).
Oral arguments: One interesting aspect of the opinion is the court’s use of oral arguments. Both the majority and the dissent argued about whether Samsung’s attorney, William Fink (O’Melveny) properly addressed the “generating control signals” limitation in claim 20 before the Board, and they used different parts of the oral argument transcript to support their opposing views.
Judge Stark’s dissent makes extensive use of concessions.
Judge Stark: Did you ever say in your petition the control signal doesn’t add anything?
Mr. Fink: We did not, to be fair, Your Honor.
Judge Stark: You just completely did not address this limitation, right?
Mr. Fink: Well, we believe we did by putting them together, but yes, in retrospect, again, this is in retrospect, had the board asked us, we could have said that and we could have addressed this. . . .
Judge Stark highlighted another telling exchange where he asked Fink if Power2B had called out this deficiency in its Patent Owner Response:
Judge Stark: Well I think the patent owner response called this out, that you missed this limitation in your petition, did they not?
Mr. Fink: The patent owner response did call this out.
Judge Stark: And did you fix it in the reply?
Mr. Fink: And I don’t think we went back and addressed generating control signals because . . . our view was [that] it was clear from the teachings of claim 13 that there’s an output signal.
Judge Stark: But did you even say that much to the Board in your reply?
Mr. Fink: No, we didn’t. No, Your Honor, we didn’t.
For Judge Stark, these admissions confirmed that Samsung had failed to meet its burden of presentation and forfeited the opportunity to make these arguments on appeal.
Meanwhile, Judge Dyk’s majority opinion characterized these same exchanges quite differently. The majority rejected the notion that Fink had “conceded” failure to address the limitation, emphasizing instead Fink’s explanation:
Mr. Fink: [W]hat Samsung said in claim 13 is, when you have the output of the intensity, . . . you create a signal that is sent to the microprocessor 16 in [the prior art] Geva . . . And granted, it’s not . . . in hac verba, that this is the generating control signals, . . . [but] that is the only signal that Samsung talks about in the claims.
Both opinions also referenced Power2B’s attorney Adam Daniels (Polsinelli) difficulty in explaining the distinction between a “control signal” and an “output indication” during oral argument. When Judge Dyk asked whether claim 13 disclosed a control signal, Daniels struggled to articulate a clear difference:
Judge Dyk: Well, doesn’t claim 13 disclose a control signal then?
[long pause while he reads the claim that does not state “control signal”]
Mr. Daniels: So, as I look at claim 13, I don’t see a control signal here.
Judge Dyk: Well, no, but my question is if control signal just means any output, then claim 13 shows a control signal and the reference, the cross reference to claim 13 would show the existence of a control signal. That’s the problem.
Mr. Daniels: . . . I don’t agree with the proposition that a control signal could mean any kind of output.
Judge Stoll pointedly challenged Daniels to provide a clearer explanation:
Judge Stoll: What is it then? . . . I mean, you should be prepared for this question, for sure.
Mr. Daniels: Sure, Your Honor. So I believe a control signal is something that would be controlling the device. So to give you an example of a control signal . . .
Judge Stoll: So, so that could be an input signal to the device.
Mr. Daniels: I don’t know that an input signal to the device just conveys information about an input, whereas a control signal would convey in my opinion, a control signal would convey information that would actually cause the device to take a further action.
In his rebuttal, Fink seized on this weakness:
Mr. Fink: This exemplifies exactly what we’re talking about, which is the patent owner can’t actually tell us what the control signal is and why it would be any different than electronic input, despite this being the subject of the whole cross appeal. . . . And despite the [PTAB] dissent specifically saying it doesn’t have any particular meaning.
Judge Stark asked the critical question about what the court should do if no material difference could be found:
Judge Stark: If we can’t find a material difference, what should we do? Even recognizing that the petition didn’t address it and the reply didn’t address it, what should we do if we think or can’t tell if there’s a material difference between claims the Board did expressly address and find to be unpatenable?
Mr. Daniels: So, Your Honor, I’ll get back to the burdens of the parties and the petitioner is the moving party and the petitioner bears the burden to prove this. And so if petitioner is going to rely upon the board to insert arguments or is going to rely upon the appeal panel here to come up with a reason why that claim will be invalid, I think that’s improper.
These oral argument exchanges reveal the judges’ early inclinations. Judges Dyk and Stoll focusing on the substantive similarity between claim terms with Judge Stark consistently emphasized procedural requirements for IPR petitions. In the end, Samsung walked on thin ice, but was lucky enough that it held firm.