Docket Nos. 2016-1880 (IPR2014-01134)
DYK, REYNA, TARANTO
December 18, 2017
Brief summary: PTAB claim construction affirmed, as were resultant findings of no explicity or inherent anticipation, or obviousness.
Summary: HTC appealed PTAB IPR final written decision (FWD) that HTC failed so show the claims of US 7,941,174 directed to a radio communication system are invalid for anticipation or obviousness, due in part to the PTAB’s claim construction. In the system, the “subscriber station” (mobile device such as a phone) is assigned codes for transmitting messages which require “transmission” power to send the codes. When there is interference in the system, more power may be required but each subscriber station is limited in is “maximum transmission power”. “According to the ‘174 patent, operating at that maximum power is undesirable so “the ‘174’s claimed solution sets a ‘transmission power difference’ or ‘power headroom’ for the plurality of codes in the subscriber station at the beginning of a message transmission” which “permits the subscriber station…to increase transmit power to overcome interference”. The PTAB instituted IPR “on three grounds: (1) anticipation by Baker, (2) obviousness over Reed in view of Baker; and (3) obviousness over Reed in view of Love.” It construed the phrase “‘at a start of a message transmission using a first one of the codes,’…to modify the phrase ‘a total transmit power of the subscriber station for the codes’” and to require “a total transmit power difference exist at the start of a message transmission.” Under this construction, the PTAB found that HTC did not show explicitly or inherent anticipation by Baker (“mere possibility…is not sufficient”) or obviousness. The FC panel explained it reviews PTAB “legal conclusions de novo” (claim construction) “and its factual findings for substantial evidence” (APA 5 USC § 706(2); ACCO Brands, FC 2016; In re Gartside, FC 2000 (quoting Consol. Edison, US 1938; Wasica, FC 2017 (intrinsic evidence reviewed de novo, factual findings based on extrinsic evidence reviewed for substantial evidence)). HTC argued the PTAB did not interpret “message” under the broadest reasonable interpretation by excluding certain embodiments, but the FC explained that “as HTC acknowledged, the [PTAB] made no such exculsion.” The FC panel also explained that to anticipate “a single prior reference must disclose every limitation of the claimed invention either expressly or inherently” (Blue Calypso, FC 2016). To inherently anticipate, it must be shown “that a person of ordinary skill in the art would recognize that missing descriptive matter in a prior art reference is nevertheless necessarily present” (Cont’l Can, FC 1991 (it “may not be established by probabilities or possibilities…that a certain thing may result from a given set of circumstances is not sufficient”)). And the FC agreed with the PTAB’s conclusion of no anticipation since only it was only shown the “start of a message” limitation was “possible”. The FC panel also agreed with the PTAB’s reading of the Reed reference and that its finding of no obviousness was supported by substantial evidence (e.g., expert declarations).
Federal Circuit summaries 