In Qualcomm Inc. v. Intel Corp., the Federal Circuit held that Qualcomm was not afforded notice of, or an adequate opportunity to respond to, the Patent Trial and Appeal Board’s (PTAB’s) novel construction of an undisputed claim limitation.1 Thus, the court vacated the PTAB’s determination that Qualcomm’s patent was invalid.2
Qualcomm’s patent, U.S. Patent No. 9,608,675, is directed to generating a power tracking supply voltage.3 Intel petitioned for six inter partes reviews (IPRs) challenging the validity of the ’675 patent.4 The parties never disputed that the “signals” of the claim limitation “a plurality of carrier aggregated transmit signals” should be construed to increase user bandwidth.5
During an oral hearing before the Board, one judge had a brief exchange with Intel on the purpose of the increased bandwidth requirement. Neither that judge nor the other two judges on the panel asked Qualcomm any questions about the increased bandwidth requirement.6 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.7
The court ruled that Qualcomm did not receive sufficient notice and opportunity to respond under the Administrative Procedure Act (APA) guarantees.8 The court distinguished the present case from Praxair.9 In Praxair, the Federal Circuit held that the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA.10 In contrast, here, the issue of whether increased bandwidth was a required part of the claim construction was not in dispute.11 The court also relied on reasoning from SAS Institute.12 In SAS Institute, the Federal Circuit stated that it was a “reasonable approach” to rely on the Board’s institution decision claim interpretation because the patent owner “agreed with [that] interpretation in its patent owner’s response” but it was unreasonable to expect parties to “have briefed or argued, in the alternative, hypothetical constructions not asserted by their opponent.”13 Here, the court explained that the patent owner agreed with the increased bandwidth requirement proposed by the petitioner, which is similar to the latter scenario in SAS Institute.14
The court rejected Intel’s threshold argument that Qualcomm was not prejudiced, stating that “by removing [the bandwidth extension] requirement, the Board eliminated an element on which Intel bore the burden of proof.”15 The court distinguished Intel’s supportive case TQ Delta that purportedly showed that the oral hearing provided Qualcomm notice and an opportunity to respond.16 In TQ Delta, the patent owner argued for a narrow interpretation for the term in its Patent Owner Response and, during the hearing, the Board “repeatedly asked [the patent owner] about its narrow construction of the term.”17 The court observed that these circumstances weren’t present in the current case.18 The court also stated that, like in another case, Dell, the patent owner did not have an adequate opportunity to respond because the hearing presented no opportunity to supply evidence.19 Finally, the Court disagreed with Intel’s assertion Qualcomm had an adequate opportunity in that it could have requested a rehearing because this “would effectively require an aggrieved party to seek rehearing before appealing a Board’s failure to provide notice and an opportunity to respond.”20
The court also affirmed the Board’s ruling that a power tracker means-plus-function limitation did not require an algorithm in the corresponding structure.
The Qualcomm ruling sheds some light on how the court handles the APA’s guarantee of notice and an opportunity to respond in IPRs. Companies who may want to rely on a Board’s claim construction may consider, for each claim element, proposing a construction that would increase the likelihood of the element being disputed by parties. Although Qualcomm is distinguished from Praxair, it is unclear how the court would rule in a case where an element is disputed but there is little exchange or questioning by the judges before they decide their own interpretation of a claim element.
1 Qualcomm Inc. v. Intel Corp., Nos. 2020-1589 – 2020-1594, 2021 WL 3160860, at 7 (Fed. Cir. 2021)
2 Id. at 2
4 Id. at 5
7 Id. at 7
8 Id. at 8
10 Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018)
11 Qualcomm at 8
12 Id. at 9
13 SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016), reversed on other grounds, SAS Institute, Inc. v. Iancu, 584 U.S. ___, 138 S.Ct. 1348 (2018)
14 Qualcomm at 9
15 Id. at 10
16 Id. at 11
17 TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1355–56 (Fed. Cir. 2019).
18 Qualcomm at 11
20 Id. at 13