Federal Circuit: PTAB Failed to Provide Adequate Notice of Sua Sponte Claim Construction

By Eileen McDermott
July 27, 2021

“Under the circumstances of this case, the [PTAB] needed to provide notice of and an adequate opportunity to respond to its construction.” – Federal Circuit

PTAB, CAFC, claim constructionIn a precedential opinion authored by chief Judge Moore, the U.S. Court of Appeals for the Federal Circuit today vacated and remanded six Patent Trial and Appeal Board (PTAB) final written decisions in inter partes review (IPR) proceedings filed by Intel that found Qualcomm’s patent claims 1–15, 17–25, and 27–33 of U.S. Patent No. 9,608,675 would have been obvious. While the CAFC agreed with the PTAB’s construction of one of the claims, which Qualcomm had challenged, it ultimately held that the Board violated Qualcomm’s procedural rights under the Administrative Procedure Act (APA) for failing to provide the company “adequate notice of and opportunity to respond to its sua sponte claim construction.”

Claims and Constructions

Claims 1 and 28 of the ‘675 patent are representative:

    1. An apparatus comprising:

a power tracker configured to determine a single power tracking signal based on a plurality of inphase (I) and quadrature (Q) components of a plurality of carrier aggregated transmit signals being sent simultaneously, wherein the power tracker receives the plurality of I and Q components corresponding to the plurality of carrier aggregated transmit signals and generates the single power tracking signal based on a combination of the plurality of I and Q components, wherein the plurality of carrier aggregated transmit signals comprise Orthogonal Frequency Division Multiplexing (OFDM) or Single Carrier Frequency Division Multiple Access (SCFDMA) signals;

a power supply generator configured to generate a single power supply voltage based on the single power tracking signal; and

a power amplifier configured to receive the single power supply voltage and the plurality of carrier aggregated transmit signals being sent simultaneously to produce a single output radio frequency (RF) signal.

    1. An apparatus comprising:

means for determining a single power tracking signal based on a plurality of inphase (I) and quadrature (Q) components of a plurality of carrier aggregated transmit signals being sent simultaneously, wherein a power tracker receives the plurality of I and Q components corresponding to the plurality of carrier aggregated transmit signals and generates the single power tracking signal based on a combination of the plurality of I and Q components, wherein the plurality of carrier aggregated transmit signals comprise Orthogonal Frequency Division Multiplexing (OFDM) or Single Carrier Frequency Division Multiple Access (SC-FDMA) signals;

means for generating a single power supply voltage based on the single power tracking signal; and

means for receiving the single power supply voltage and the plurality of carrier aggregated transmit signals being sent simultaneously and producing a single output radio frequency (RF) signal. (emphases added).

Intel proposed in its six IPR petitions that “‘a plurality of carrier aggregated transmit signals’ means ‘signals for transmission on multiple carriers at the same time to increase the bandwidth for a user.’” Qualcomm proposed a different construction: “signals from a single terminal utilizing multiple component carriers which provide extended transmission bandwidth for a user transmission from the single terminal.”

Both constructions, as well as the construction used by the International Trade Commission in a parallel proceeding, included an increased bandwidth requirement. But during oral hearing, one judge asked Intel: “[Q:] What is the purpose, and where is the support, for requiring ‘to increase the bandwidth for a user?’” Qualcomm was asked no questions on the topic, and Intel’s answers led to the Board eventually issuing six final written decisions that construed the term “a plurality of carrier aggregated transmit signals” in each claim to mean “signals for transmission on multiple carriers,” and omitted “any requirement that the signals increase or extend bandwidth,” finding all challenged claims unpatentable. Further, with respect to claim 28 or associated dependent claims, the PTAB held that “means for determining a single power tracking signal . . .” (power tracker limitation) in claim 28 is a means-plus function limitation and that “power tracker 582” is the corresponding structure.

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There Must Be Dispute

In its discussion, the CAFC  began by explaining that it agreed with Qualcomm’s argument that it was not given ample time to respond to the construction of “a plurality of carrier aggregated transmit signals.” Qualcomm also argued that the Board’s construction of the power tracker limitation had failed to include an algorithm in the corresponding structure, but the CAFC found no error.

Key to the CAFC’s decision to vacate was the court’s assertion that, while it has held previously, in cases like Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018), that the PTAB may adopt a claim construction not proposed by either party without violating the APA, such instances are limited to situations in which terms are in dispute. The court explained: “Parties are well aware that the Board may stray from disputed, proposed constructions…. [T]he issue of whether increased bandwidth was a required part of the claim construction was not in dispute.”

In SAS Institute, Inc. v. ComplementSoft, LLC., the CAFC said that it was “reasonable for the petitioner to rely on the Board’s institution decision claim interpretation because the patent owner ‘agreed with [that] interpretation in its patent owner’s response and never suggested that the Board adopt the construction that eventually materialized in the final written decision.’” Similarly, in this case, “the patent owner agreed with the increased bandwidth requirement proposed by the petitioner.” The court continued:

While the Board did not change theories midstream or depart from a construction it previously adopted, it is still difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target. And, unlike with disputed terms, it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction. This is particularly true here given that a separate agency (the Commission) had already adopted the increased bandwidth requirement for the claim term. Accordingly, under the circumstances of this case, the Board needed to provide notice of and an adequate opportunity to respond to its construction.

Intel Strikes Out

As to Intel’s arguments that Qualcomm had not demonstrated prejudice to show a procedural violation; that oral hearing provided sufficient notice and opportunity for Qualcomm to respond; and that Qualcomm’s ability to petition for rehearing provides sufficient opportunity for them to respond, the court disagreed with each.

As to prejudice, the court said that Qualcomm had argued throughout each IPR proceeding that the prior art did not disclose the increased bandwidth requirement and that the Board’s decision to remove an agreed-upon requirement without notice prejudiced Qualcomm. There also was no reason for Qualcomm to brief the requirement, without notice, especially considering the word limitations for IPRs. The hearing was likewise insufficient to provide adequate notice because the topic was raised in a “single question-answer exchange between one judge and Intel regarding the increased bandwidth requirement, followed by that judge’s offhand comment that the panel would ‘think about whether that’s necessary.’”

While Intel attempted to liken the case to TQ Delta, LLC v. DISH Network LLC, in which the court held the patent owner had adequate notice of a sua sponte claim construction, the CAFC distinguished the case because “[t]here…the patent owner argued for a narrow interpretation for the term in its Patent Owner Response and, during the hearing, the Board ‘repeatedly asked [the patent owner] about its narrow construction of the term and explained that it disagreed with [its] interpretation.’ Id. at 1355–56. Thus, the patent owner’s own pre-argument filing recognized a dispute as to the term which was explored extensively at oral argument.” The hearing also provided little to no opportunity for Qualcomm to address the issue.

Finally, the CAFC said that Intel’s assertion that rehearing request provides adequate opportunity for response “would effectively require an aggrieved party to seek rehearing before appealing a Board’s failure to provide notice and an opportunity to respond.” The court elaborated:

Though it may have been a more efficient use of resources had Qualcomm sought rehearing, Qualcomm was not required to do so. Accordingly, we reject Intel’s argument that Qualcomm’s failure to seek rehearing dooms its procedural challenge.

As to Qualcomm’s challenge to the PTAB’s claim construction of claim 28 for failing to include an algorithm in the corresponding structure, the court said that “our case law ‘does not require a specific algorithm when the identified structure is not a general purpose computer or processor.’”

Ultimately, the court vacated the decisions and remanded for further proceedings due to the Board’s failure to provide Qualcomm adequate notice of and opportunity to respond to its sua sponte claim construction.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 2 Comments comments. Join the discussion.

  1. ipguy July 27, 2021 6:35 pm

    I’d truly love for the bios of these PTAB judges to be available so we could determine just how much claims construction experience they truly have.

  2. Valuationguy July 28, 2021 8:51 am

    MICHELLE N. WORMMEESTER, AMANDA F. WIEKER, and
    SCOTT B. HOWARD are the three ALJ’s whom decided the case at the PTAB.

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