Latest Federal Court Cases, 08/02/21
Qualcomm Inc. v. Intel Corp., Appeal Nos. 2020-1589, et al. (Fed. Cir. July 27, 2021)
In the only precedential patent decision issued by the Federal Circuit this week, the Court addressed again the due process and statutory right of parties in IPR proceedings to have notice and an opportunity to be heard on theories that the PTAB may rely on in rendering its decisions. The Court also addressed the requirement that patents drawn to certain processes in computers disclose an algorithm, holding that this requirement did not apply to specialized circuits.
Intel filed six IPRs against a Qualcomm patent that relates to techniques for generating power tracking supply voltages in circuits. Intel proposed that a claim limitation in the patent—“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’s proposed construction also included phraseology about increasing bandwidth for the user. The parties never disputed that the signals were required to increase user bandwidth. All briefing by the parties incorporated this agreed requirement.
At the two-hour oral argument, one judge asked a question of the Intel attorney where the support for that requirement was found. Intel responded that it “would be comfortable” if that requirement was eliminated. That was the only question on the issue at the oral argument. None of the judges asked any questions of Qualcomm about the issue. The next day, the Board sua sponte asked for supplemental briefing on a different issue, to which the parties responded.
In its final written decision, the PTAB adopted a construction that omitted this requirement, and found the patent invalid. Qualcomm appealed, and the Federal Circuit reversed.
The Court relied on the APA statute that entitles parties the right to notice and an opportunity to be heard. Qualcomm was given no notice that the Board may propose a construction that omitted a bandwidth requirement, and has no reason or opportunity to respond.
The Court reiterated that the PTAB is not bound by claim constructions offered by the parties. However, in this case, where both parties agreed to that component of the construction, the Court found that it is “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.” The Court held that this was even more so the case here, since the ITC had also construed the claim and had included the bandwidth requirement.
The Court dispensed with Intel’s theories that Qualcomm had an opportunity to be heard at the hearing and through a rehearing process. The Court noted that Qualcomm was never asked a question about the issue at the hearing. And the Court held that a party is not required to seek rehearing in order to preserve an issue for appeal.
As to the second issue, one of the claim terms was “means for determining a power tracking signal.” The PTAB construed this term pursuant to Section 112(f)—it identified the function corresponding to the “means,” and identified the structure in the specification that corresponded with that means: a power tracker, which was an integrated circuit and not a general purpose computer.
Qualcomm appealed. It argued based on a line of cases involving the use of means-plus-function language as applied to general purpose computers that the corresponding structure must also include the algorithms that were used in the power tracking integrated circuit.
The Court disagreed. It held that the requirement to disclose and identify an algorithm as sufficient “structure” applies only to general purpose computers, and not to means that are performed by integrated circuits. It declined to extend the rule any further, finding that the reasoning underlying the requirement for general computers did not apply to circuits, and further noting the effect such a new rule would have on existing patents.
A copy of the opinion can be found here.
By Nika Aldrich