Docket No. 2017-2012, -2013, -2014, 2074 (IPR2015-01828, -01829, -01831)
O’MALLEY, REYNA, TARANTO
September 13, 2018
Brief summary: Board’s IPR decisions finding certain claims of PV’s patent relating to cellular phones obvious affirmed (e.g., “[a]ny motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine the references”).
Summary: PV appealed Board IPR decision finding certain claims of US 6,091,940 relating to cellular phones invalid for obviousness. Qualcomm appealed the opposite decision for other claims. In its IPR petitions, Qualcomm argued for obviousness in view of the “Nozawa” and “Ariie” groups of references, which were addressed separately by the FC panel (the Board’s legal decisions being reviewed “de novo and its underlying factual determinations for substantial evidence” (Dynamic Drinkware, FC 2015). In its decision regarding the Nozawa references, the Board held the claims “would have been obvious because it was undisputed that ‘the structure of Nozawa is capable of producing a signal that satisfies the limitation of the claim’” and that “Qualcomm impermissibly had changed its theory of unpatentability as to the method claims.” PV argued the Board based its Nowaza-based apparatus claims decision on arguments “that Qualcomm did not present in its petitions” and the Board relied “on an untimely and erroneous construction”, but the FC panel disagreed since “Qualcomm was neither required to identify the conditions under which Nozawa’s device will output a plurality of integer-multiple harmonics nor obligated to explain why a person of skill in the art would have selected such operating conditions” since “the claims here fall squarely on the ‘capable of’ side of the line” and the Board did not err in its analysis (Hewlett-Packard, FC 1990 (“[a]pparatus claims cover what a device is, not what a device does”); Finjan, FC 2010 (“to infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode”; see also Ericsson, FC 2014 (infringing “products only need[ed] to have a component that [wa]s reasonably capable of ‘arranging information for transmission’”); Ball Aersol, FC 2009 (“where an apparatus needed to be altered in order to be ‘configured’ as claimed and there was no evidence of such alteration, it does not infringe the claim”); “Here, the apparatus claims are most similar to those in Ericsson and are fundamentally dissimilar to those in Ball Aerosol.”) The FC panel found the Nowaza-based decision regarding the method claims to “present a different story” since “Qualcomm needed to present evidence and argument that a person of ordinary skill would have been motivated to operate Nozawa in a manner that satisfied the ‘plurality of harmonics’ limitation” and did not (InTouch, FC 2014; Hewlett-Packard, FC 2003). In its decision regarding the Ariie references, the Board agreed with Qualcomm that the reference rendered the claims unpatentable as obvious. But the FC panel disagreed with PV that Qualcomm’s arguments that Board relied on to be have been “untimely” as those were present in Qualcomm’s IPR petition. The FC panel also agreed with the Board that there was a motivation to combine the references (Outdry, FC 2017 (“[a]ny motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine the references”)). The FC panel therefore affirmed the Board’s IPR decisions.