{"id":3072,"date":"2021-07-27T16:52:00","date_gmt":"2021-07-27T21:52:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=3072"},"modified":"2021-08-14T12:54:45","modified_gmt":"2021-08-14T17:54:45","slug":"ptab-departure-from-agreed-claim-construction-required-notice-and-opportunity-to-be-heard","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=3072","title":{"rendered":"PTAB Departure from Agreed Claim Construction Required Notice and Opportunity to be Heard"},"content":{"rendered":"\n

In Qualcomm Inc. v. Intel Corp.<\/a>, [2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593,
2020-1594] (July 27, 2021), the Federal Circuit vacated and remanded six inter partes review final written decisions determining that claims 1\u201315, 17\u201325, and 27\u201333 of U.S. Patent
No. 9,608,675 would have been obvious.<\/p>\n\n\n\n

The \u2019675 patent relates to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously, using one power amplifier and one power tracking supply generator. During the IPR’s the parties never disputed that the signals were required to increase user bandwidth, and in the International Trade Commission, the Commission\u2019s construction of the term also included the increased
bandwidth requirement.<\/p>\n\n\n\n

The Board issued six final written decisions concluding that all challenged claims were unpatentable. In reaching its conclusion, the Board construed the term \u201ca plurality of carrier aggregated transmit signals\u201d in each asserted claim to mean \u201csignals for transmission on multiple carriers,\u201d omitting any requirement that the signals increase or extend bandwidth.<\/p>\n\n\n\n

Qualcomm argued that it was not afforded notice of, or an adequate opportunity to respond to, the Board\u2019s construction of \u201ca plurality of carrier aggregated transmit signals,\u201d and the Federal Circuit agreed. The Federal Circuit began by noting that \u201c[a] patent owner in [an IPR] is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection,\u201d
based on due process and Administrative Procedure Act (APA) guarantees.<\/p>\n\n\n\n

The Board may adopt a claim construction of a disputed term that neither party proposes
without running afoul of the APA. Parties are well aware that the Board may stray from disputed, proposed constructions, however, but in the instant case the issue of whether increased bandwidth was a required part of the claim construction was not in dispute. The Federal Circuit noted that the patent owner owner agreed with the increased bandwidth requirement proposed by the petitioner. While the Board did not change theories midstream or depart from a construction it previously adopted, it is still difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target. The Federal Circuit said that unlike with disputed terms, it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction. Thus the Federal Circuit found that in the
the circumstances of this case, the Board needed to provide notice of, and an adequate opportunity to respond to, its construction. The Federal Circuit further found that Qualcomm did not receive notice or an opportunity to be heard regarding the Board\u2019s construction that departed from the agreed-upon increased bandwidth requirement, and thus, the Board violated Qualcomm\u2019s procedural rights under the APA.<\/p>\n\n\n\n

<\/p>\n","protected":false},"excerpt":{"rendered":"

In Qualcomm Inc. v. Intel Corp., [2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593,2020-1594] (July 27, 2021), the Federal Circuit vacated and remanded six inter partes review final written decisions determining that claims 1\u201315, 17\u201325, and 27\u201333 of U.S. PatentNo. 9,608,675 would have … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,26],"tags":[],"class_list":["post-3072","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3072","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=3072"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3072\/revisions"}],"predecessor-version":[{"id":3073,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3072\/revisions\/3073"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=3072"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=3072"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=3072"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}