A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Qualcomm, Inc. v. Intel Corp., et al., Nos. 2020-1589, -1590, -1591, -1592, -1593, -1594 (Fed. Cir. (PTAB) July 27, 2021). Opinion by Moore, joined by Reyna and Stoll.
Qualcomm owns a patent directed to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously. Intel filed six IPR petitions asserting that certain claims were invalid as obvious.
During the IPRs, the parties proposed competing claim constructions, both of which recited that the signals increase or extend bandwidth for a user. The parties never disputed that the signals were required to increase user bandwidth. At the oral hearing, one judge asked one question about the increased bandwidth requirement, directed only at Intel. Ultimately, the Patent Trial and Appeal Board held all challenged claims unpatentable. But in reaching its conclusion, the Board omitted any requirement that the signals increase bandwidth. Qualcomm appealed.
In the appeal, Qualcomm argued that it was not afforded adequate notice of, or an adequate opportunity to respond to, the Board’s claim construction. The Federal Circuit agreed.
The Federal Circuit stated that the Board’s claim construction “diverged from the agreed-upon increased bandwidth requirement for the term; it did not merely adopt its own construction of a disputed term.” The court deemed it “unreasonable to expect parties to brief or argue agreed-upon matters of claim construction.” Thus, “under the circumstances of this case, the Board needed to provide notice of and an adequate opportunity to respond to its construction.”
Intel argued that Qualcomm did not demonstrate prejudice, that the oral hearing provided notice and an opportunity to respond, and that Qualcomm could have sought rehearing in order to respond. The Federal Circuit rejected all three arguments.
First, without determining whether prejudice is required, the Federal Circuit ruled that Qualcomm made an adequate showing of prejudice.
Second, the Federal Circuit determined that the oral hearing did not provide an adequate opportunity. “The Board did not announce a construction, criticize the parties’ agreed-upon requirement, ask any follow-up questions to Intel, or ask any related questions to Qualcomm.”
Third, the Federal Circuit ruled that seeking rehearing is not required. “Intel’s position would effectively require an aggrieved party to seek rehearing before appealing,” but the Federal Circuit has “generally held that a party need not seek rehearing in order to seek relief from a Board decision on appeal.” Thus, “though it may have been a more efficient use of resources had Qualcomm sought rehearing, Qualcomm was not required to do so.”
Finally, addressing a separate claim construction issue for a means-plus-function term, the Federal Circuit held that an algorithm was not required for the corresponding structure. The claim term involved circuitry, not a general-purpose computer or processor. The Federal Circuit explained that “our case law does not require a specific algorithm when the identified structure is not a general-purpose computer or processor.” Qualcomm sought to extend the algorithm requirement to circuitry, but the Federal Circuit declined to do so.