Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Qualcomm, Inc. v. Intel Corp., No. 2020-1589 (Jul. 27, 2021). The Court vacated and remanded the ruling of the Patent Trial and Appeal Board that the patent claims at issue were obvious in view of the prior art.
Intel initiated six inter partes reviews (IPRs) challenging the validity of Qualcomm’s U.S. Patent No. 9,608,675. In each petition, Intel proposed the claim term “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 the construction “signals from a single terminal utilizing multiple component carriers which provide extended transmission bandwidth for a user transmission from the single terminal.” The parties never disputed that the signals were required to increase user bandwidth. In a parallel proceeding before the International Trade Commission (ITC), the ITC adopted this increased bandwidth requirement.
During the oral hearing, the Board devoted little attention to whether the claims required the signals to increase user bandwidth, and none of the judges on the panel asked Qualcomm any questions about it. Ultimately, the Board issued six final written decisions concluding that all challenged claims were unpatentable. In reaching its conclusion, the Board construed the term “a plurality of carrier aggregated transmit signals” in each asserted claim to mean “signals for transmission on multiple carriers,” omitting any requirement that the signals increase or extend bandwidth. Qualcomm appealed.
The Federal Circuit vacated and remanded, holding that that the Board had failed to provide Qualcomm adequate notice of and opportunity to respond to its sua sponte claim construction. The Court noted that the claim construction issue here was not in dispute. The Court explained that it was unreasonable to expect the parties to brief or argue agreed-upon matters of claim construction, particularly given that a separate agency (the ITC) had already adopted the increased bandwidth requirement for the claim term.
Separately, the Court held there was no error in the Board’s construction of a different claim term. Specifically, the Court agreed with the Board’s determination that the corresponding structure for the means-plus-function claim term “means for determining a single power tracking signal” is circuitry, rather than a general-purpose computer, and therefore does not trigger the algorithm requirement of WMS Gaming. The Court declined to extend the algorithm requirement to circuitry.