Board IPR obviousness finding affirmed, TQ Delta had “opportunity to be heard”


TQ Delta, LLC v. Dish Network LLC

Docket No. 2018-1799 (IPR2016-01470)
NEWMAN, LINN, WALLACH
July 10, 2019

Brief Summary: Board IPR FWD finding TQ Delta’s communications systems claims obvious affirmed.

Summary: TQ Delta appealed Board IPR Final Written Decision (FWD) finding the challenged claims of US 8,611,404 relating to power management systems for telephone services unpatentable as obvious. TQ Delta argued the Board violated its “procedural rights by relying on a new claim construction” for the “‘without needing to reinitialize limitation as being ‘satisfied if any step of initialization is avoided’…because neither party advocated for a new claim construction and the PTAB sua sponte construed” the term such that it “was denied a proper chance to respond”. The FC panel disagreed, finding that “the PTAB did not ‘change course’” since the term was not construed in its Decision to Institute and TQ Delta “had notice” before the FWD was issued (e.g., at the Oral Hearing, the Board “repeatedly asked TQ Delta about its narrow construction…and explained it disagreed”) (HTC, FC 2017 (claim construction in the context of the prior art, “establish[ing] the scope and boundaries of the subject matter that is patented”); Intell. Ventures, FC 2017; SAS (US 2018 (Board “cannot change theories midstream”); Hamilton Beach, FC 2018 (“opportunity to be heard”)). The FC panel also agreed with the Board’s construction of the term under the broadest reasonable construction (“[a]t the time of the” FWD; In re Power Int., FC 2018 (“begin with the words of the claims”); Phillips, FC 2005 (“surrounding claims and broader specification”); Wenger, FC 2001 (dictionary definition of “the prefix ‘re-‘ as ‘again, anew, over again’”)). TQ Delta also argued the obviousness decision is not supported by substantial evidence, arguing the prior art does not “teach avoiding any steps” and teaches away from that limitation. The FC panel disagreed since the prior art “teaches ways to reduce power”, specifies initialization parameters, provides a motivation to combine, and does not teach away (Redline, FC 2015; In re NuVasive, FC 2016; Elbit, FC 2018 (Board may select one of “two inconsistent conclusions” if supported by substantial evidence); In re ICON, FC 2007 (teaching away where “combination would produce an inoperative result”)). Thus, the Board decision was affirmed.

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away, Uncategorized. Bookmark the permalink.

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