To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations

The United States Court of Appeals for the Federal Circuit recently issued a ruling discussing the differences between obviousness determinations of apparatus and method claims. According to the Federal Circuit, an apparatus that is “capable of” performing certain functions may be anticipated by or made obvious by the prior art, whereas, a method claim requires a person of ordinary skill to be motivated to operate the apparatus in a manner that would satisfy a limitation. See ParkerVision Inc. v. Qualcomm, Inc., Nos. 17-2012, 2013, 2014, 2074 (Fed. Cir. Sept. 13, 2018) (Before O’Malley, Reyna, and Taranto, Circuit Judges) (Opinion for the court, O’Malley, Circuit Judge).

The case arrived at the Federal Circuit by way of appeal from ParkerVision, Inc. (“ParkerVision”), the owner of U.S. Patent No. 6,091,940 (“’940 patent”), which is directed to the “up-conversion” of low frequency electromagnetic signals to higher-frequency signals generally related to telecommunications devices, such as cellular phones. The patent includes both apparatus and method claims. In three separate inter partes review (“IPR”) decisions, the Board held unpatentable as obvious (pre-AIA) certain claims of the patent-in-suit. On appeal, ParkerVision primarily challenged the Board’s decision by arguing that the Board erred in holding the apparatus claims unpatentable. While Qualcomm, Inc. and Qualcomm Atheros, Inc. (together, “Qualcomm”) contend in their cross-appeal that the Board erred in upholding the patentability of the challenged method claims.

The Board issued three final written decisions addressing the patentability of the ’940 patent. The Board determined that the apparatus claims would have been obvious because it was undisputed that the “the structure of [prior art] is capable ofproducing a signal that satisfies the limitations of the claim.” At the same time, the Board determined that Qualcomm impermissibly changed its theory of unpatentability as to the method claims. Specifically, the Board found that, while Qualcomm asserted in its petition that the prior art taughtthe claim limitation conditions it failed to provide any argument or evidence as to why a person of ordinary skill would have selected operating conditions that would cause the prior art to generate the claim limitation conditions. And the Board found that it was too late for Qualcomm to argue that a person of ordinary skill would have selected inputs that would have resulted in the prior art outputting the claim limitation conditions for the first time in its reply briefs.

First, the Court affirmed the Board’s unpatentability determinations as to the apparatus claims. Critically, the primary prior art reference’s device necessarily will produce the conditions to meet the relevant ’940 claim limitations under some, albeit not all, conditions.

“We explained long ago that “[a]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).  As a result, “[a]n invention need not operate differently than the prior art to be patentable, but need only be different”—or, rather, “unobviously different.” 1464 & n.2 (citations omitted). A corollary of these principles is that an apparatus that is “capable of” performing certain functions may be anticipated by or obvious in view of a prior art apparatus that can likewise perform these functions. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (explaining “that, to infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode.” (quoting Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991))). Indeed, “depending on the claims, ‘an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of noninfringing modes of operation.’” Id. (citations omitted). Similarly, a prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.”

As for the method claims, Qualcomm was required to identify prior art that discloses more than a device capable of performing the claimed method. Specifically, Qualcomm “needed to present evidence and argument that a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.” See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1346-47 (Fed. Cir. 2014).  The Board found that Qualcomm’s petitions were deficient because they “d[id] not speak to whether a person of ordinary skill in the art would have any reason to” operate [the prior art device] with inputs that would produce the required [claim limitation]

Here, Qualcomm failed to put forth any argument or evidence in its petitions as to whether [the prior art] device, even if capable of doing so, actually would output [conditions as described by the claim limitation], or why a person of ordinary skill in the art would have been motivated to use the particular inputs that would result in such an output, choosing to broach that subject for the first time in its reply briefs. We therefore affirm the Board’s determination that claims [at issue] were not proven unpatentable.

Accordingly, the Court affirmed the Board’s patentability determination in each of three IPR decisions.

Take Away

To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”


The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

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