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PTAB: No Chance to Re-characterize Disclosures of Reference in IPRs

Final Written Decisions were entered on March 7, 2017 in 6 IPRs brought by Qualcomm Inc. against ParkerVision, Inc (IPR2015-01828, -01829, -01831, -01832, -01833, and -01834). These 6 IPRs all challenged patent 6,091,940 (the ’940 patent), a patent directed to methods and systems where a signal with a lower frequency is up-converted to a higher frequency. Across the 6 IPRs, 12 grounds of unpatentability were instituted against various of the 374 claims of the ’940 patent and relying on various combinations of 8 references. The Board found 51 claims of the ’940 patent unpatentable on at least one ground, while 9 challenged claims were not found unpatentable on any ground.

In reaching its conclusions as to patentability, beyond the Board’s analysis of the disclosures of the references and the law of obviousness as applied to the challenged claims, it also had to grapple with issues raised by ParkerVision in the six IPRs regarding the proper scope of a reply brief submitted by a petitioner. In three of the Final Written Decisions, the Board was able to address these issues in a relatively brief manner. In IPR 2015-01829, the Board found that an alleged “new” argument challenged by ParkerVision as being first disclosed in the reply was originally disclosed in the Petition. In IPR2015-01831, the argument challenged by ParkerVision was ultimately not relied upon by the Board in reaching its decision, and the issue was thus considered moot. In IPR2015-01828, however, the Board agreed that Qualcomm had presented new arguments in its Reply. Although neither the cited evidence supporting the argument nor the reference being applied to a claim limitation were new, the Board found that the manner in which Qualcomm argued the limitation was disclosed was new. Specifically, the “new” arguments were based on it being obvious to select conditions which would lead to a limitation, while Qualcomm had originally argued that the limitation was itself actually taught in the asserted reference.

The three other IPRs (IPR2015-01832, -01833, and -01834) go into greater detail regarding the alleged new arguments, for example providing charts summarizing both the sections of Qualcomm’s reply challenged by ParkerVision and Qualcomm’s response to each section. At issue in these three IPRs, similar to IPR2015-01828 discussed above, is the manner in which Qualcomm argued that a limitation was disclosed by a reference. All grounds instituted in these three IPRs have a common reference, and the issue of proper scope of the reply brief is based on whether Qualcomm’s argument that a limitation was would have been obvious in light of the reference was argued in the petitions of these IPRs. The discussions of this issue in all three IPRs are largely the same.

The Board did not accept Qualcomm’s position that the arguments were initially raised in the petitions, stating that the petition had argued that the reference recited the limitation in question, not that it rendered the limitation obvious. Similarly, the Board rejected the assertion that the “would have been obvious” argument was merely responsive to ParkerVision’s argument that the limitation was not expressly disclosed. The Board stated:

An argument that a claim limitation is disclosed by a particular teaching in a prior art reference is not the same as an argument that the claim limitation would have been rendered obvious by the teaching in that reference. If Petitioner wanted to argue that these claim limitations would have been obvious, it was incumbent upon Petitioner to raise the argument in the Petition and not wait until its Reply to do so.

As the Board did not find support for the argument in the petitions and rejected the assertion that they were responsive, the Board did not rely on the challenged sections in making its decision.

No claims were found unpatentable in these three IPRs. The question of the proper scope of a reply brief ultimately may have been outcome-determinative, as all of the challenged claims in the three IPRs contained the limitations which the “new” arguments from Qualcomm addressed. As these limitations were not found to be expressly disclosed in the reference and whether they were rendered obvious by the reference was not considered, all challenges to claims of the ’940 patent in these IPRs failed.

The PTAB here sends a clear message to petitioners: be thorough in petitions not just in ensuring what references apply to all limitations, but also ensuring that the manner in which all references disclose or render those limitations obvious. To the Board, these are two different arguments, and there will be no second chance to make it if disclosure is challenged.