IPR obviousness decisions reversed for new claim construction; algorithm not required for circuitry

Qualcomm Inc. v. Intel Corp. (USPTO as Intervenor)

Docket No. 2020-1589-94 (IPR2018-01326-30, -01340) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1589.OPINION.7-27-2021_1810321.pdf)

MOORE, REYNA, STOLL

July 27, 2021

Brief Summary:  Board IPR obviousness decisions vacated and remanded as Qualcomm had no notice of change in claim construction; “algorithm requirement of WMS Gaming” not triggered by circuitry limitation.

Summary:  Qualcomm appealed PTAB (“Board”) IPR final written decisions (six FWDs) finding the challenged claims of U.S. Pat. No. 9,608,675 relating to power tracking techniques obvious.  The challenged claims include an “increased bandwidth requirement” that was agreed to by Intel, Qualcomm and the International Trade Commission is a parallel proceeding.  The FC panel explained that during an oral hearing on the IPRs “one judge asked one question about the increased bandwidth requirement, directed only at Intel, during the entire hearing” and the Board then requested additional briefing on the “power tracker limitation” but not the increased bandwidth requirement.  However, in its FWDs the Board removed the increased bandwidth requirement.  Qualcomm argued “that it was not afforded notice of, or an adequate opportunity to respond to, the Board’s construction” and the FC panel agreed.  It explained that while it has “held that the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA” (Praxair, FC 2018; Western-Geco, FC 2018), in this case “the issue of whether increased bandwidth was a required part of the claim construction was not in dispute.”  Here, the FC panel wrote, “[t]he Board’s construction of ‘a plurality of carrier aggregated transmit signals’ diverged from the agreed-upon increased bandwidth requirement for the term; it did not merely adopt its own construction of a disputed term” and “it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction” (SAS, FC 2016).  The FC panel also found Qualcomm was prejudiced as it “had no reason to brief that requirement or establish an evidentiary record supporting it” and “did not provide Qualcomm notice that the Board might depart from the increased bandwidth requirement” (Dell, FC 2016 (“Unlike the issue of anticipation in Dell, the parties here agreed on the increased bandwidth requirement.”); unlike TQ Delta (FC 2019) in which the “patent owner had adequate notice of the Board’s sua sponte construction of a claim term in its final written decision”).  Qualcomm also challenged the Board’s construction of the power tracker limitation (agreed by both parties to be means-plus-function) as not requiring the “corresponding structure” (a circuit, not a computer) to include an algorithm.  The FC panel agreed with the Board (“[I]f a recited function requires special programming, then the specification must disclose the algorithm that the computer performs to accomplish that function…Because power tracker 582 is not a general-purpose computer, it does not trigger the algorithm requirement of WMS Gaming.”; WMS, FC 1999; Nevro, FC 2020 (“[O]ur case law ‘does not require a specific algorithm when the identified structure is not a general purpose computer or processor.’”); “Qualcomm’s proposed extension would jeopardize a plethora of patents in the electrical arts that rely on circuitry as the corresponding structure for their means-plus-function claim limitations.”)  The Board’s FWDs were vacated and remanded.

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Means-plus-function, Obviousness, Software. Bookmark the permalink.

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