The CAFC Hands Down Another Decision Demonstrating Its Misguided View of Obviousness

“Xiaomi took Maalouf’s invention as its own only after Maalouf invented it, made it, and proved the market for it. If it is obvious to combine the elements in the prior art simply because Xiaomi wants to provide commercially successful products, why didn’t Xiaomi do it first?”

obviousnessI attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.

Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

The Microsoft/Xiaomi matter added insult to injury, as Maalouf had previously been attacked at the U.S. Patent and Trademark Office (USPTO) with six IPRs filed by Shenzhen DJI – the Chinese Communist Party (CCP)-controlled drone manufacturer banned by in the United States as a national security threat.

The focus of this article, however, is on how Maalouf’s patents were invalidated as obvious by the CAFC.

The Lawlessness of Obviousness

In Microsoft’s attack on Maalouf’s patents, the PTAB found it obvious over two combinations of the prior art. While there are legitimate arguments that show that the prior art used is not appropriate to invalidate the patents, Judge Reyna’s dangerously misguided view of the motivation to combine items in the prior art is much more concerning.

For a patent claim to be obvious when the elements of the invention are in multiple prior art items, there must be a motivation to combine those elements. If there is no motivation to combine them, it cannot be obvious to do it.

In Maalouf’s PTAB trial, Microsoft’s expert, Welch, explained that a motivation to combine can simply be the motivation to produce a commercially successful product:

A PHOISTA would be motivated to combine Kim’s shaft and mounting structure with Rosenhan’s handle to the many different types of mobile phones on the market, thereby expanding the commercial application of the handle.” (Taken from the CAFC decision).

The PTAB agreed with Microsoft’s theory and found Maalouf’s claims invalid as obvious.

Of course, motivation to create commercially successful products is a primary motivation for any business. But how can it be proven that this ubiquitous business motivation means that someone will identify and combine any specific items to produce a product?

To answer that question and others, Maalouf appealed to the CAFC.  A hearing was held on February 6.  In the recording of the hearing, at 2:20 Judge Reyna gives that answer:

“Why would that not be sufficient motivation to combine? Where just purely making the changes that don’t seem very complex required here in order to combine you are able to use the device to a whole host of other cameras, different sizes and shapes, and consequently, you have a greater commercialization. Why isn’t commercialization itself sufficient basis for motivation to combine?”

On Thursday, February 23, 2023, the CAFC issued its decision finding Maalouf’s patents obvious:

 “The Boards underlying factual findings are supported by substantial evidence, particularly the testimony of Microsoft’s expert, Welch.” And “we do not agree that Welch’s testimony, including the portion we have excerpted above, is conclusory.  Instead, Welch clearly articulated why a skilled artisan would be motivated to combine Rosenhan and Kim, …”

Clearly, the CAFC has ruled that a ubiquitous business motivation to produce commercially viable products is enough to show motivation to combine any items in the prior art.

Reyna’s Blatant Hindsight Bias

Reyna’s comments and the CAFC’s decision are the absurd conclusion of dangerous hindsight bias, which would be entertaining if it was not so damaging to U.S. innovation.

Under this crazy notion, there is motivation to combine any elements in the prior art because the purpose of inventing is to achieve commercial success, and since only successful inventions are litigated, the fact that an invention is a commercial success is implied proof that it was obvious to invent it.

No invention can withstand this test, except those that never attain commercial success.

Commercial Success Means the Invention is Not Obvious

Meanwhile, back here in the real world, it is a simple fact that an invention must be invented before it can be commercialized. When the inventing happens, there is no way to know that the invention will become a commercial success. Inventors can only imagine that commercial success, and then bet their hard work and treasure on a lottery ticket that will be won (or lost) after the invention goes to market.

In the real world, commercial success is absolute proof of a great invention – not the other way around, as the USPTO and the CAFC have made law.

If Maalouf’s invention was obvious, why didn’t Xiaomi already have it on the market? After all, Xiaomi is the world’s third largest mobile phone maker, with over 30 million customers, far greater expertise, and much deeper pockets than Maalouf. Therefore, Xiaomi is, by far, better positioned to see obvious things than Maalouf.

Xiaomi took Maalouf’s invention as its own only after Maalouf invented it, made it, and proved the market for it. If it is obvious to combine the elements in the prior art simply because Xiaomi wants to provide commercially successful products, why didn’t Xiaomi do it first? That profound question must be answered.

Is the real answer that the risk that an invention may not become a market success is too great for Xiaomi, so it’s better to wait for little guys, like Maalouf, to prove their inventions in the market and then just steal whatever works? If so, what Xiaomi did is more accurately called IP theft.

Self-Evident Truth

The self-evident truth is that the simple fact that Maalouf invented it, brought it to market, and it became a commercial success long before Xiaomi, or any others, even tried is absolute proof that his invention was not obvious, and absolute proof that Maalouf’s invention is meritoriously deserving of patent protection.

Judge Reyna’s theory is blatant hindsight bias of the worst kind. It destroyed the fruits of an American citizen’s labor and treasure, and in doing that, opened access to the U.S. market for Xiaomi, a predatory CCP-controlled multinational, with help provided by Microsoft, an American multinational without a dog in the fight, the USPTO and the CAFC. How is it even possible that we allow this to happen?



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Join the Discussion

22 comments so far.

  • [Avatar for jacek]
    March 12, 2023 12:42 pm

    When it comes to “obviousness”: It is “Obvious” that the US patent is a piece of garbage

  • [Avatar for Cathy Regina Szymanski]
    Cathy Regina Szymanski
    March 10, 2023 03:23 pm

    Once a patent has been granted it belongs to her/him, I think is the issue.

  • [Avatar for James T.R]
    James T.R
    March 4, 2023 01:05 am

    This is all very interesting and has quite the patent intellectualism on display. I see and agree with the comment of the “first to file rule” and if an inventor figures out a new way to combine two or more exiting elements to create a new thing…(isn’t that the very “definition ” of meaning of “invention”)…of other patented inventions and the patent examiners finds patentability after his or her examination by granting the (a) patent then they should hold to their decision and oath.(BTW l lost three office actions because the patent examiner claimed that the “stand” l was using to hold up my innovation for a new type of target game was the same several others…well how did the others all get patents and not me, if l too was using a similar stand? Thats like inventing a new car and you get rejected because you are using an axil and another comentor quoted)
    Just because a corporation decides it wants it because of it’s innovation or it’s commercial success and files an IPR to challenge its validity does not merit the introduction of “new standards” to destruct the patent. As for rendering a decision of “obvious” based on the new standard is simply biasesness on the part of the PTAB motivated by their political and financial conspiracy with the corporation. And to judge on hindsight that the invention is now “obvious” because it has proven commercial success is…well…pure…insanity!!! Especially for a corporation who holds other patents in the same product area…”obviously” they did not “discover the new innovation” “prior” to them “seeing” the new patent or product of it on the market. Just because you see something that belongs in your product line does not mean it belongs to you…without paying for it!!! This all just boils down to the collusion between our government institutions and big corporations to steal from us, the American citizen. China is not the problem…it is our problem. Saying “China is the problem” is like saying it’s the guard-dogs fault that the thief got away with all your property in the house, when you muzzled up and locked the dog in the basement. Our patent system…”was”…the best in the world until 2011-12 when they enacted the AIA and conceived the PTAB. So where is and who are the problems…l think it is…”OBVIOUS!”

  • [Avatar for bart]
    March 3, 2023 08:44 pm

    Reyna asks “Why isn’t commercialization itself sufficient basis for motivation to combine?” I’ll tell you why: because the courts have established that commercial success is one of many factors in determining that it would not have been obvious to combine.

    This ruling is absolutely insane. Since when was one of the secondary factors of nonobviousness considered to be a factor towards obviousness?

    So if today, commercial success is a motivation to combine, what will it be tomorrow? Long felt but unresolved need, or industry praise, or evidence of copying, or failure of others?

    I can see it now:

    Reyna: “Why isn’t long felt but unresolved need itself sufficient basis for motivation to combine? Clearly this patent claim is obvious because the problem solved by the claim has been known for a long time, and no one else has ever solved it.”
    And saying that would be absurd. And Reyna’s rationale has exactly matched that already.

    In fact, with this rationale Reyna has just inadvertently solved the Office’s desire for “robust and reliable patents”, because now, a patent that never achieves commercial success is robust and reliable in Reyna’s eyes. Why? Because, per Reyna, all commercially successful patents would have been obvious to put together by nature of their “commercialization.”

    There truly is no reason to seek a U.S. patent today.

    CAFC: “We are omniscient, and all commerce belongs to us.”

  • [Avatar for Breeze]
    March 2, 2023 11:44 am

    “A PHOISTA would be motivated to combine Kim’s shaft and mounting structure with Rosenhan’s handle to the many different types of mobile phones on the market, thereby expanding the commercial application of the handle.”

    This “articulated reasoning” is entirely speculative. It has zero objective evidentiary support. This is why we need a legislative fix to PHOSITA in section 103.

  • [Avatar for Mark A. Sokalski, P.E.]
    Mark A. Sokalski, P.E.
    March 1, 2023 11:13 am

    If you combine two different patents into a new product, two things happen. One, you are infringing on the two existing patents. So you need to wait up to 20 years to use another’s protected patents or pay royalties for use. Two, you have created a new design and patentable product regardless of the simplicity of combining the two components. It’s the thought that counts.
    This process is called design evolution.
    Henry Ford created the models A, B, and T well before the Lincoln Continental was ever conceived. All these designs use the obvious “wheel and axle” design.

  • [Avatar for Max Drei]
    Max Drei
    March 1, 2023 03:46 am

    Paul, I’m sorry I didn’t make myself clear. What I’m on about is the difference between i) a claim to cover an inventive concept (the balloon) and ii) covered by that claim, the exact product that is enjoying all the commercial success (the diamond). Just because that product is greeted with acclaim is no reason to grant exclusive rights for 20 years for a claim that covers, if you will, everything under the sun that isn’t already on the market. The name of the game is the claim, and not the product. There are a thousand reasons other than the concept covered by the claim, why any given product might achieve success in the marketplace

    Here, the Maalouf patent application at the EPO failed. One can see from both the USPTO and the EPO file that a handle with slide member to grip the edges of a cellphone was already known. Given that fact, and the simplicity of Maalouf’s abstract drawing, it is not very surprising that the tribunal (any tribunal) would set its face against recognising patentability.

    But that said, I agree wholeheartedly that hindsight is a menace, when adjudicating obviousness. A filter is needed, to exclude it. There is one that works, namely TSM, but only as practised by the EPO. But even that approach works only when it is correctly applied.

    With the benefit of hindsight knowledge of i) Maalouf’s invention and ii) the relevant prior publications, I should have really enjoyed writing the Mallouf patent application. It would have been a challenge, one I would have eagerly accepted.

    Incidentally, the interplay of filing dates (Maalouf’s versus those of the applied prior art) is interesting in the context of what “counts” as prior art for obviousness attacks in a supposedly “first to file” jurisdiction i) in the USA and ii) under the EPC.

  • [Avatar for Lab Jedor]
    Lab Jedor
    February 28, 2023 05:16 pm

    This is what Rosenhan discloses:
    “A configuration as shown in FIGS. 6A-6B may also advantageously allow for interchangeability of handle 402 so that handle 402 may be used with various smartphones. For example, variously configured protective cases such as that shown at 410 may be provided for various different smartphones (e.g., iPhones, Androids, etc.)”

    Rosenhan teaches specific holders for each type of smartphone. Rosenhan only teaches a universal handle.

    Rosenhan teaches that a flexible or soft case may hold different types of smartphones. However Rosenhan also specifically says that: “Where protective case 410 is hard and rigid, case 410 may be specifically configured for an individual smartphone model.”

    Accordingly, Rosenhan did not and was basically unable to provide a universal case. Somebody, (Maalouf) needed to invent that universal case.

    What the expert says, and the CAFC bought into that argument, is that Rosenhan in hindsight “should” have invented or disclosed the universal case, because in hindsight it is “obvious.” But Rosenhan didn’t. As can be clearly read from the Rosenhan disclosure.

    In fact it is obviously clear that Rosenhan did specifically not make that “obvious” step. And we can all agree: Rosenhan would have, could have and maybe should have make that step in hindsight. But he didn’t.

  • [Avatar for Doreen Trujillo]
    Doreen Trujillo
    February 28, 2023 04:42 pm

    From the decision:

    “In view of Rosenhan’s disclosure of accommodating
    phones with various shapes and sizes, a POSITA
    would have been motivated to replace the mounting structure of Rosenhan with a more flexible
    mount that was capable of being used with a larger
    number of mobile phones having different shapes
    and sizes, a situation specifically identified in

    The reference already discloses that the mount accommodates phones of various shapes and sizes. There is no motivation to modify the mount further to accommodate phones of more shapes and sizes. It would be redundant.

  • [Avatar for Lab Jedor]
    Lab Jedor
    February 28, 2023 04:32 pm

    On a separate but related note: “Patent grants will no longer be issued on paper, and as a result, they will no longer be mailed to the correspondence address of record as part of the patent issuance process. ”

    It is now official: patents are worth less than the paper they are (or should be) printed on. I appreciate the savings in paper. Several hundred thousand patents annually is a lot of paper. But in a way it is symbolic for the entire current patent system.

    In the past you wanted a printed patent with ribbon to proudly show, Right now you see people think: ” what a nut-case to pursue a useless piece of paper.” The USPTO is right: better hide your fruitless waste of time and money.

  • [Avatar for Pro Say]
    Pro Say
    February 28, 2023 02:49 pm

    Yet more jurisIMprudence.

    The only thing that’s obvious here . . . is that a handful of the CAFC judges need to join Patrick Leahy grazing out in the anti-patent pasture.

    So they can do no more harm to American innovation.

  • [Avatar for Smarts]
    February 28, 2023 01:51 pm

    Looks like another good case for the Supreme Court. A Clear Abuse of Sua Sponte where the Judge is swayed into a Bias through Clear misdirection of court proceeding. The elements of the inventor to combine were not an anticipation of the commercial successes(at the time) of the invention until the Combined(Handle) element(not obvious) created that commercial success for the inventor. The PTAB’s Bias forced the coordinates of those elements upon the successful claims to form the combination through “Biasing” of the Claims. “Biasing” of the(non obvious) elements to form commercial success is owned by the inventor not(Biasing)by the Infringer by law. Technically this patent still belongs to the inventor.

  • [Avatar for Jim Thomas]
    Jim Thomas
    February 28, 2023 01:28 pm

    The bias is raging. Consider the source. Paul is well-aligned with advocating for the ‘small inventor’.

    The second paragraph in Paul’s article:
    “Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.”

    Is all about China penetrating American markets with the help of an American (Microsoft). It has nothing at all to do with whether there is, or is not, obviousness in the case.

    Thus Paul seems to advocate for a finding of non-obviousness because this evil Chinese company is getting US markets.

    I’d much rather be reading about the merits of an obvious / non-obvious case than the evils of China against the ‘small’ inventor.

    Way too dumb for me. – and I freaking hate China.

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    February 28, 2023 12:28 pm

    Finally, we have an answer to the question “what is a good patent?” A good patent, the type the USPTO should issue, is apparently one that will not have commercial success because one that did have commercial success would have been obvious and should not have been issued.

  • [Avatar for PTO-indentured]
    February 28, 2023 12:07 pm



    Commercial success = invalidation

    If any ‘expert’ asserts POSA would be motivated by such success.

    New: ‘Magic Words’ formula — so simple a contrivance, a law-student intern can draft it — and any valuable US IP goes up in smoke.

    “Obviously it is successfully, thus it is obvious.”

  • [Avatar for Doreen Trujillo]
    Doreen Trujillo
    February 28, 2023 11:55 am

    The statement below seems to show a lack of motivation. If Rosenhan discloses that its holder already accommodates phones of various shapes and sizes, as the statement below suggests, then there is no motivation to make any changes to accommodate phones of various shapes and sizes, unless Rosenhan suggests more flexibility is needed.

    “In view of Rosenhan’s disclosure of accommodating
    phones with various shapes and sizes, a POSITA
    would have been motivated to replace the mounting structure of Rosenhan with a more flexible
    mount that was capable of being used with a larger
    number of mobile phones having different shapes
    and sizes, a situation specifically identified in
    Rosenhan. “

  • [Avatar for David Kirmayer]
    David Kirmayer
    February 28, 2023 11:25 am

    However nasty this story may appear after such a fulminant J’accuse-type of an attack, let me be the devil’s advocate and advocate caution in jumping to conclusions.

    I must admit, that apart from being completely ignorant in the particulars of the case (of even of its existence before I’ve read the article), I read the cited passage, as a standalone argument, slightly differently. I read it as when there is nothing more than a very simple modification combining the know features from known products yielding expected result, no further motivation is required, since the modification per se is simple and the results are obvious. Of course it could be asked whether it were obvious to try these modifications with this self-evident and desirable result, such as suitability to a variety of products instead of only several (conductive to a larger market, quite expectedly), and if the answer were yes!, well, yes, it is obvious. I allude to all these well-known justifications existing in the US (and elsewhere) for quite a while.

    And of course, I agree with Max Drei’s comment above, the commercial success should not be overemphasized. There are rules, more or less, to apply this criterion, almost in every jurisdiction, and they seem somewhat balanced at the moment. Let’s not try to fix with a hammer what’s not yet completely broke.

    The bolded sentence, however, if read out of context, I admit is indeed grievously dangerous. I only pray that USPTO wouldn’t adapt it blindly and indiscriminately – there’s enough difference between the US and the rest of the world in the determination of the inventive step, and the world (and I am sure of it, the USA as well) need no further.

  • [Avatar for Josh Malone]
    Josh Malone
    February 28, 2023 10:46 am

    The Federal Circuit in all their wisdom has defined the fundamental act of inventing — solving a problem — as a basis for invalidating an issued patent. There is no point in participating in the U.S patent system, it’s a total farce.

  • [Avatar for Lab Jedor]
    Lab Jedor
    February 28, 2023 10:43 am

    An inventor creates an invention that did not exist before. It has known elements but combined in a unique and unknown way. It is successful.

    An infringer copies the invention. And maintains that the combination is obvious, because the original invention is successful. And all the good judges nodding their agreement on this brilliant reasoning.

    The Theatre of the Absurd is not half as absurd as the CAFC. It is an institution run by Till Uelenspiegel. And MD always contributing to the fun.

  • [Avatar for Paul Morinville]
    Paul Morinville
    February 28, 2023 09:49 am

    Max, I don’t understand your example. Are you selling a diamond in a balloon, and your objection that diamonds existed and balloons existed so putting a diamond in a balloon is obvious?

    I think you are trying to form an analogy, but discussing in the abstract using non-related objects may not be helpful. I’d like to discuss specific cases instead of ideas for cases. Do you know of any?

  • [Avatar for Anon]
    February 28, 2023 08:44 am

    The adage of “two wrongs do not make a right” comes to mind.

  • [Avatar for Max Drei]
    Max Drei
    February 28, 2023 07:54 am

    Paul, when you aver that:

    “commercial success is absolute proof of a great invention”

    are you saying that all prior art-based objections to the patentability of any given product claim are automatically rendered null and void as soon as Applicant makes a showing of a degree of “commercial success” enjoyed by some product or other that falls within the scope of that claim, regardless how wide the scope of the claim is?

    In other words, if the diamond somewhere within the envelope of a gynormous conceptual balloon (the scope of claim 1) is selling well, that fact renders the balloon itself, the concept, the claim, immune from attack on the patentability of that concept?

    I can’t believe it. You must be saying something else. What might that be.