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

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