       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                 IN RE: APPLE INC.,
                       Appellant
                ______________________

                      2016-1402
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,332.
                  ______________________

                Decided: April 14, 2017
                ______________________

    WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, argued for appellant. Also repre-
sented by SYDENHAM B. ALEXANDER III, LAUREN B.
FLETCHER, SARAH R. FRAZIER, DOMINIC E. MASSA; RACHEL
KREVANS, NATHANIEL BRYAN SABRI, Morrison & Foerster
LLP, San Francisco, CA.

    ROBERT J. MCMANUS, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Michelle K. Lee. Also represented by
NATHAN K. KELLEY, THOMAS W. KRAUSE, FRANCES LYNCH,
SCOTT WEIDENFELLER.

    KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, for amici curiae Samsung
Electronics Co., Ltd., Samsung Electronics America, Inc.
2                                           IN RE: APPLE INC.




Also represented by WILLIAM ADAMS; VICTORIA FISHMAN
MAROULIS, Redwood Shores, CA.
                ______________________

     Before PROST, Chief Judge, DYK and STOLL, Circuit
                        Judges.
STOLL, Circuit Judge.
     Apple appeals the Patent Trial and Appeal Board’s
decision rejecting all claims of its patent in a reexamina-
tion proceeding. Apple contends that the Board erred by
construing the “scroll or gesture” and “rubberbanding”
limitations too broadly. We agree with Apple on the
latter, but not the former. Accordingly, we affirm-in-part,
vacate-in-part, and remand for further proceedings con-
sistent with this opinion.
                        BACKGROUND
    Apple Inc. is the assignee of U.S. Patent
No. 7,844,915, which claims software that allows a
touchscreen device to differentiate between a scroll opera-
tion and a gesture operation based on the number of
detected input points—i.e., finger touches. See ’915
patent col. 23 ll. 16–41. For example, the ’915 patent
teaches that a single input point is interpreted as a scroll,
whereas two or more input points are interpreted as a
gesture. Id. at col. 6 ll. 39–43. Gestures may include
zooming in, zooming out, or rotating an image on the
screen. Id. at col. 5 ll. 42–48. Claim 1 recites a method
that invokes the “scroll or gesture” limitation in dispute in
this case:
        1. A machine implemented method for scroll-
    ing on a touch-sensitive display of a device com-
    prising:
            receiving a user input, the user input
        is one or more input points applied to the
IN RE: APPLE INC.                                        3



        touch-sensitive display that is integrated
        with the device;
            creating an event object in response to
        the user input;
            determining whether the event object
        invokes a scroll or gesture operation by
        distinguishing between a single input
        point applied to the touch-sensitive dis-
        play that is interpreted as the scroll opera-
        tion and two or more input points applied
        to the touch-sensitive display that are in-
        terpreted as the gesture operation;
             issuing at least one scroll or gesture
        call based on invoking the scroll or gesture
        operation;
            responding to at least one scroll call, if
        issued, by scrolling a window having a
        view associated with the event object
        based on an amount of a scroll with the
        scroll stopped at a predetermined position
        in relation to the user input; and
             responding to at least one gesture call,
        if issued, by scaling the view associated
        with the event object based on receiving
        the two or more input points in the form of
        the user input.
Id. at col. 23 ll. 16–41 (emphases added). Independent
claims 8 and 15 recite a machine readable storage medi-
um and an apparatus, respectively, that contain the same
limitation. All other claims in the ’915 patent depend
from either claim 1, 8, or 15.
    The ’915 patent also describes an improved scrolling
feature called “rubberbanding.” When a user scrolls past
the edge of the content on the screen, a predetermined
4                                             IN RE: APPLE INC.




amount of blank space is displayed and then the content
slides back to fit on the screen, resembling the motion of a
taut rubber band when the tension is released from one
end. For example, if a user scrolls too far such that no
content remains in the direction of the scroll—i.e., a user
scrolls down when the screen is already displaying the
most recent email at the top—the phone will show a
predetermined amount of blank space above the most
recent email and will slide the content back onto the
screen at the end of the scroll. Id. at col. 7 ll. 59–67, col. 8
l. 61 – col. 9 l. 60; see also id. Figs. 6A–6D. Claim 2 re-
cites rubberbanding:
           2. The method as in claim 1, further compris-
    ing:
               rubberbanding a scrolling region dis-
           played within the window by a predeter-
           mined maximum displacement when the
           scrolling region exceeds a window edge
           based on the scroll.
Id. at col. 23 ll. 42–46. Dependent claims 9 and 16 con-
tain similar limitations.
    An unidentified third party filed a request for ex parte
reexamination of all claims of the ’915 patent, and the
U.S. Patent and Trademark Office granted the request.
Based on its constructions of the scroll or gesture and
rubberbanding limitations, the Examiner rejected every
claim of the ’915 patent as anticipated or obvious in view
of the prior art, and the Board affirmed. Ex Parte Apple,
Inc., No. 2014-007899, 2014 WL 7171965, at *7 (PTAB
Dec. 9, 2014) (“Board Decision”). The Board granted
Apple’s Request for Rehearing but declined to modify its
decision. Ex Parte Apple, Inc., No. 2014-007899, 2015 WL
5676869, at *4 (PTAB Sept. 24, 2015) (“Rehearing Deci-
sion”).
IN RE: APPLE INC.                                       5



    Apple timely appealed the Board’s decision. We have
jurisdiction pursuant to 35 U.S.C. § 141(a) and 28 U.S.C.
§ 1295(a)(4)(A).
                       DISCUSSION
    Both of Apple’s arguments on appeal are rooted in
claim construction. “[W]e review the Board’s ultimate
claim constructions de novo and its underlying factual
determinations involving extrinsic evidence for substan-
tial evidence.” Prolitec, Inc. v. Scentair Techs., Inc.,
807 F.3d 1353, 1358 (Fed. Cir. 2015) (citing Teva Pharm.
U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841–42
(2015)). Here, “because the intrinsic record fully deter-
mines the proper construction, we review the Board’s
claim constructions de novo.” Microsoft Corp. v. Proxy-
conn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015). Claims
receive the broadest reasonable interpretation consistent
with the specification during reexamination proceedings.
In re Man Mach. Interface Techs. LLC, 822 F.3d 1282,
1286 (Fed. Cir. 2016). “While the Board must give the
terms their broadest reasonable construction, the con-
struction cannot be divorced from the specification and
the record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011).
                            I.
    First, Apple contends that the Board’s construction of
the phrase “two or more” in the scroll or gesture limita-
tion is unreasonable in light of the claim structure and
specification. According to Apple, the ’915 patent articu-
lates a single rule for distinguishing between two catego-
ries of operations: 1) a “single” input point that is
interpreted as a scroll operation; and 2) “two or more”
input points that are interpreted as a gesture operation.
Apple claims that the “or” in the phrase “two or more”
does not create a distinction between two input points and
more than two input points. In other words, the phrase
“two or more” must be interpreted as an atomic unit,
6                                           IN RE: APPLE INC.




meaning that two-, three-, four-, and five-input points
must all be interpreted as gestures. Noting that the
Board is required to apply the broadest reasonable inter-
pretation in light of the specification, Apple points out
that the specification consistently refers to gestures as
requiring “two or more” input points or a “plurality” of
input points. See, e.g., ’915 patent col. 1 ll. 45–46, col. 5
ll. 42–48, col. 7 ll. 4–8.
    In reaching a contrary conclusion, the Board ex-
plained that the broadest reasonable interpretation of the
phrase “two or more” permits either two input points or
more than two input points to be interpreted as a gesture
operation. Board Decision, 2014 WL 7171965, at *4;
Rehearing Decision, 2015 WL 5676869, at *1. Stated
differently, the Board held that the claim language only
requires detection of a scroll operation in response to a
single input point and a gesture operation in response to
one of the possible multi-input touches. Because the prior
art relied on by the patent examiner—including JP 2000-
163031 to Nomura and U.S. Patent No. 7,724,242 to
Hillis—both teach a single-input scroll and a two-input
gesture, J.A. 409, ¶¶ 53–56; ’242 patent col. 3 ll. 46–49,
col. 8 ll. 44–48, the Board rejected the claims. Board
Decision, 2014 WL 7171965, at *4.
    We agree with the Board’s construction. The perti-
nent claim language recites: “distinguishing between a
single input point . . . and two or more input points.” ’915
patent col. 23 ll. 25–28 (emphasis added). On its face, this
language does not limit the invention such that all re-
ceived user inputs must be categorized as either a scroll
or a gesture as Apple contends. Apple’s construction
would replace the word “or” with “and,” thereby requiring
all multi-input touches to be distinguished as gestures.
But this reading is too narrow. The broadest reasonable
interpretation of the word “or” in the phrase “two or more”
creates alternatives for the gesture operation: a gesture
operation occurs if either two input points or more than
IN RE: APPLE INC.                                          7



two input points are detected. We additionally note that
the claims use the open-ended transitional phrase “com-
prising” and, thus, the claims are broad enough to include
user inputs that are categorized as something other than
a scroll or a gesture, undermining Apple’s suggestion that
the claims are limited to a single rule. And the claim
language is broad enough to read on prior art, such as
Nomura and Hillis, that distinguishes between a single
input point and two input points, regardless of how three-,
four-, or five-input points are interpreted.
     Apple’s reliance on the specification is also unavail-
ing. Although the specification does describe a gesture
operation in the context of “two or more” or a “plurality” of
input points or touches, it does not define “two or more” or
“plurality” as meaning that all of the possible pluralities
(e.g., two-, three-, four-, and five-input touches) must be
interpreted as a gesture. Apple’s brief touts the invention
disclosed in the specification as a single rule that distin-
guishes all user inputs as either a scroll or a gesture.
Apple states: “The ’915 patent does not describe any
category of user input other than a scroll or a gesture;
every user input is determined to be in one of those two
categories.” Appellant Br. 9. But the specification does
not bear out Apple’s reading. In describing Figure 1, for
example, the specification suggests that other user inputs
are possible, explaining that “user input may be in the
form of an input key, button, wheel, touch, or other means
for interacting with the device.” ’915 patent col. 6 ll. 34–
36. Moreover, the specification describes methods other
than a single rule to distinguish scrolls from gestures.
For example, the specification discloses that, “[i]n certain
embodiments, determining whether the event object
invokes a scroll or gesture operation is based on receiving
a drag user input for a certain time period.” Id. at col. 6
ll. 43–46. Contrary to the description of the patent in
Apple’s brief, Apple’s specification does not emphasize the
importance of the single rule Apple now wants its claims
8                                           IN RE: APPLE INC.




to cover. Nor does the specification expressly or implicitly
define the term “two or more” beyond its ordinary mean-
ing such that the claims should be interpreted to require a
single rule that identifies and separates all inputs as
either scrolls (by detecting one-touch) or gestures (by
detecting all other multi-input touches).
    As the Board recognized, this claim language is
properly construed under the BRI as distinguishing
between a single input touch and any multi-input touch.
Accordingly, we discern no error in the Board’s construc-
tion of “two or more” under the broadest reasonable
interpretation.
                            II.
     Apple next faults the Board for adopting the Examin-
er’s interpretation of “rubberbanding” as covering sliding
content forward at the end of a scroll (i.e., sliding in the
same direction as the scroll). Based on this construction,
the Board rejected claims 2, 9, and 16—which include the
rubberbanding limitation—as obvious in view of WO
03/081458 to Lira in combination with Hillis or other
prior art of record. Apple contends the Board erred in its
claim construction because rubberbanding requires slid-
ing the content backwards in the opposite direction of the
scroll. 1



    1   As an initial matter, we disagree with the Board’s
conclusion that Apple waived its argument that rubber-
banding requires sliding the displayed content backwards.
Rehearing Decision, 2015 WL 5676869, at *3. Apple
raised this argument in its Patent Owner’s Appeal Brief
when it contended that “Lira teaches that the screen
should ‘snap’ to the next region of content” and therefore
achieved “the opposite effect from rubberbanding.”
J.A. 798–99.
IN RE: APPLE INC.                                          9



    Lira discloses a method for scrolling within a column
of content on a small display screen that relies on a “user-
defined snap threshold” to determine whether to stay on
the current column of text or move horizontally to the
next column. J.A. 477. If the user’s horizontal scroll does
not exceed the threshold, indicating an intent to stay on
the current column, that column is centered on the dis-
play screen at the end of the scroll. If, however, the user’s
scroll exceeds the threshold, the adjacent column in the
direction of the scroll is “snapped” into view, i.e., the
content slides forward to display the next column. Id.
    The Examiner appears to have construed rubberband-
ing in a circular manner to require “rubberbanding a
scrolled region by a predetermined maximum displace-
ment when the scrolled region exceeds a display edge.”
J.A. 843 (quoting ’915 patent col. 5 ll. 35–40). The PTO
argues on appeal that the broadest reasonable interpreta-
tion of rubberbanding is not limited to sliding content in a
particular direction, much less requiring that the content
must slide backwards, and that the concept of rubber-
banding “simply seeks to control the movement of scrolled
content.” Appellee Br. 49. Because the Board’s construc-
tion did not limit rubberbanding to sliding content back-
wards, it found that Lira disclosed this limitation.
    We agree with Apple that the Board’s analysis rests
on an incorrect interpretation of rubberbanding. As
expressly defined in the specification, the key to the
rubberbanding feature is sliding content in the opposite
direction of the scroll—sliding content backwards—once
the scroll has been completed. Acting as lexicographers,
the inventors of the ’915 patent expressly defined rubber-
banding in the specification as follows:
    Rubberbanding a scrolled region according to the
    method 300 occurs by a predetermined maximum
    displacement value when the scrolled region ex-
    ceeds a display edge of a display device based on a
10                                           IN RE: APPLE INC.




     scroll. If a user scrolls content of the display mak-
     ing a region past the edge of the content visible in
     the display, then the displacement value limits
     the maximum amount for the region outside the
     content. At the end of the scroll, the content slides
     back making the region outside of the content no
     longer visible on the display.
’915 patent col. 7 ll. 59–67 (emphasis added); see also id.
at col. 9 ll. 10–46; Figs. 6A–6D. As this portion of the
specification makes clear, rubberbanding requires the
content to slide backwards at the end of a scroll. The
term “rubberbanding,” as defined by the inventors, does
not cover sliding content forward at the end of the scroll,
and the Examiner did not cite any evidence to support the
proposition that selecting the direction of the scrolling
would be within the level of ordinary skill. Because the
Board misinterpreted the rubberbanding limitation, we
vacate its rejection of claims 2, 9, and 16, and remand for
the Board to reconsider these claims in light of the proper
interpretation of rubberbanding. 2
                        CONCLUSION
    We have considered the parties’ remaining arguments
and find them unpersuasive. The Board correctly con-
strued the scroll or gesture limitation but erred in its
construction of the rubberbanding limitation. Therefore,
the Board’s decision is affirmed-in-part, vacated-in-part,
and remanded for further proceedings consistent with this
opinion.



     2   On remand, the Board should also consider Lira’s
disclosure that the “column is re-centered and snapped
back” into alignment with the display window when “the
user’s scrolling does not exceed the threshold,” as identi-
fied in the Examiner’s Answer. J.A. 844.
IN RE: APPLE INC.                          11



  AFFIRMED-IN-PART, VACATED-IN-PART, AND
                REMANDED
                          COSTS
    Each party shall bear its own costs.
