Last month, in Qualcomm Inc. v. Intel Corp., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on six inter partes review (“IPR”) decisions that held claims 1-15, 17-25, and 27-33 of Qualcomm’s U.S. Patent No. 9,608,675 (“the ’675 Patent”) unpatentable as obvious.
At a basic level, a wireless device, such as your smartphone, transmits data with a transmitter and receives data with a receiver. To send data, the transmitter processes the data into output samples, conditions the output samples to generate a radio frequency (“RF”) signal, amplifies the RF signal, and transmits via antenna the amplified signal to a base station (e.g., a cell tower). To receive data, the receiver obtains via antenna a received RF signal and may amplify and process the received RF signal and recover the data originally sent by the transmitter. Essentially, the ’675 Patent relates to this data transmission and reception process in that the ’675 Patent discloses techniques “for generating a power tracking supply voltage for a circuit (e.g., a power amplifier) that processes multiple transmit signals sent simultaneously,” including “transmissions sent simultaneously on multiple carriers at different frequencies.”
Intel challenged the validity of the ’675 Patent by filing six IPRs, with each petition proposing that the phrase “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, contending that the phrase should mean “signals from a single terminal utilizing multiple component carriers which provide extended transmission bandwidth for a user transmission from the single terminal.” However, both parties agreed, congruent with a parallel proceeding at the International Trade Commission, that the signals were required to increase user bandwidth. At an oral hearing, one judge asked Intel about this increased bandwidth requirement, but the Board never requested briefing on the matter.
When the Board issued its six final written decisions (where it concluded all challenged claims were unpatentable) the Board construed the term “a plurality of carrier aggregated transmit signals” in such a way that omitted any requirement that the signals increase or extend bandwidth. Additionally, the Board found “the power tracker limitation” in claim 28 of the ’675 Patent to be a means-plus function limitation, with “power tracker 582” as the corresponding structure.
The CAFC centered its discussion on two issues raised by Qualcomm. First, on a procedural issue, Qualcomm argued it was not given notice or adequate opportunity to respond to the Board’s construction of the term “a plurality of carrier aggregated transmit signals.” Second, on an issue of claim construction, Qualcomm appealed the Board’s construction of “the power tracker limitation” for failing to include an algorithm in the corresponding structure. The CAFC agreed that the Board violated Qualcomm’s procedural rights by failing to give notice or sufficient time to respond. However, the CAFC did not find error in the Board’s construction of the “power tracker limitation.”
Regarding the procedural issue, the CAFC looked to the Administrative Procedure Act (APA) and the Court’s prior holdings. “We have held that the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA.” However, the CAFC said that by construing a term both parties agreed on, and in a way that diverged from the agreed-upon construction, the Board “did not merely adopt its own construction of a disputed term.” The CAFC noted that neither party briefed the term, and that the International Trade Commission had already adopted the agreed-upon interpretation.
Intel countered that, even assuming a procedural violation, Qualcomm did not demonstrate prejudice. The CAFC responded that it is not clear whether Qualcomm needed to show prejudice in the first place. However, even assuming Qualcomm did need to show prejudice, the fact that the Board’s claim construction eliminated the requirement for increased bandwidth meant that the Board eliminated a claim element that Intel bore the burden of proof to show. Additionally, without giving Qualcomm the opportunity to brief the elimination of the increased bandwidth requirement, the Board further prejudiced Qualcomm.
Further, Intel contended that the oral hearing and the option to move for a rehearing provided adequate opportunity to respond. The CAFC was not persuaded. The brief exchange at the oral hearing was inadequate and uninformative. The Board “never asked Qualcomm any question of any kind about the requirement,” and the Board did not ask for briefing following the hearing. The CAFC found the option to move for rehearing similarly inadequate because it would require “an aggrieved party to seek rehearing before appealing a Board’s failure to provide notice and an opportunity to respond.”
Concluding, the CAFC found for Qualcomm and held that the Board needed to give notice of and an adequate opportunity to respond to its construction – therefore, the Board violated Qualcomm’s procedural rights under the APA.
Regarding, the claim construction issue, the CAFC first noted that it reviews questions or claim construction de novo. The Board’s holding was that the “power tracker limitation” in claim 28 had the function of “determining a single power tracking signal,” with the corresponding structure being the “power tracker 582,” which it found to be a circuit, rather than a computer. Qualcomm argued that the corresponding structure was in fact the integrated circuit on which the power tracker may be implemented, and that this must include algorithms for programming the circuit. The CAFC disagreed with Qualcomm.
Citing to its previous holding in Nevro Corp. v. Bos. Sci. Corp., the CAFC stated that its case law “does not require a specific algorithm when the identified structure is not a general-purpose computer or processor.” While Qualcomm acknowledged that the “power tracker 582” is not a general-purpose computer or processor, it did ask the CAFC to extend its holding in Nevro Corp. to circuitry. However, the CAFC disagreed: “Unlike a general-purpose computer or microprocessor, circuitry does not ‘perform very different tasks in very different ways.’” In rejecting Qualcomm’s proposed extension, the CAFC also invoked a specter of jeopardizing “a plethora of patents in the electrical arts that rely on circuitry as the corresponding structure for their means-plus-function claim limitations.”
The CAFC’s defense of the procedural rights of patent owners before the Board may be seen as a boon. However, practitioners should also take note of the CAFC’s rejection of Qualcomm’s argument and the CAFC’s subsequent refusal to extend its algorithm claim construction precedent to circuitry. This holding should give pause to patent applicants to carefully consider drafting means-plus-function claims when the corresponding structure is circuitry.