Intel had Article III standing for appeal; Board IPR obviousness decision reversed as Intel showed motivation to combine under KSR

Intel Corporation v. Qualcomm Incorporated

Docket No. 2020-1664 (IPR2018-01429) (https://cafc.uscourts.gov/opinions-orders/20-1664.OPINION.12-28-2021_1885985.pdf)

PROST, TARANTO, HUGHES

December 28, 2021

Brief Summary:  Board’s IPR claim construction affirmed but obviousness decision reversed due to “apparent reason to combine” the prior-art elements.

Summary:  Intel appeal PTAB (“Board”) IPR decision finding some of Qualcomm’s claims of US 8,229,043 relating to radio frequency communication systems patentable.  Intel petitioned for IPR of the ‘043 patent with its customer Apple as real parties-in-interest, alleging anticipation by the prior art “Der” reference and obviousness in view of Der and “Razavi” or Der and “Valla”.  The Board found Intel did not show claims 6, 17-19 and 21 to be invalid.  The FC panel first addressed the Article III standing requirement (Apple, FC 2021; Spokeo, US 2016 (“(1) an “injury in fact” (2) “fairly traceable” to the defendant’s challenged conduct and (3) “likely to be redressed by a favorable judicial decision”; ““concrete and particularized and actual or imminent, not conjectural or hypothetical”); Grit Energy, FC 2020 (“engaged in, is engaging in, or will likely engage in activity that would give rise to a possible infringement suit”)).  It explained that “settlements can deprive parties of standing” (Apple, FC 2021), “Intel was informed that ‘Qualcomm is not offering a covenant not to sue’” and while “that refusal isn’t on its own ‘sufficient to create an actual controversy’” (Prasco, FC 2008; Grit, FC 2020), Intel has standing as it “continues to sell the relevant products to Apple and at least one other customer, and that in doing so it must ‘address[] the ’043 patent and the risk of an infringement suit by Qualcomm’” (“Intel’s risks transcend mere conjecture or hypothesis”). 

The FC panel then addressed the construction of the claim phrase “radio frequency input signal” and “[a]pplying the ‘broadest reasonable interpretation’ standard” (37 CFR 42.100(b)), affirmed the Board’s construction “in the context of the entire patent” (Phillips, FC 2005; Innova/Pure Water, FC 2004; Arista, FC 2018 (“‘plain meaning’ unless ‘inconsistent with the specification and prosecution history’”); PPC, FC 2016 (“reasonable in light of the claims and specification”); Info-Hold, FC 2015 (cannot “limit[] the ordinary meaning of the claims to the patent’s embodiments”); e.g., the Board’s reading “prevents the word ‘input’ from being redundant in the claim”, “reflects the specification’s repeated use of the disputed phrase”, and “gives effect to the contextually appropriate meaning”)). 

The FC panel next considered obviousness of Qualcomm’s amended claims, accepting the Board’s analysis was “satisfactorily explain[ed]” but disagreeing that there was no “apparent reason to combine” the prior-art elements (KSR, US 2007).  In its amendment, Qualcomm added a “second switch” limitation and the Board found Intel’s obviousness arguments “too generic”, because the prior art “described the switch as prior art with shortcomings”, and disagreed because “the combination would render Der unsuitable for its intended purpose.”  The FC panel explained that “because [some] improvements are ‘technology-independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves’” (DyStar, FC 2006 (“‘implicit motivation to combine’ to make a device ‘more desirable’”)).  In addition, “Intel’s expert indicated precisely how and why a skilled artisan would have combined the references”, it “fit the teachings of multiple patents together like pieces of a puzzle”, and involved a “known problem” with an “obvious solution” (KSR, US 2007 (“the predictable use of prior art elements according to their established functions”, “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes”); PAR Pharm., FC 2014 (“It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’”).  The Board decision was therefore affirmed-in-part and vacated-in-part.

This entry was posted in Appeal, Article III disputes, Claim Construction, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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