949 F.3d 697
Fed. Cir.2020Background
- Andrea Electronics sued Apple for infringement of U.S. Patent No. 6,363,345 (the ’345 patent); Apple filed two IPR petitions (’626 and ’627) challenging many claims, including dependent claims 6–9.
- The ’345 patent concerns digital audio noise reduction using spectral subtraction with per-frequency “current minimum” and “future minimum” values and updating those minima “periodically.” Claims 6–9 recite limitations about periodically setting or replacing those minima.
- The PTAB instituted both IPRs, consolidated them, and in final decisions found most challenged claims unpatentable but concluded claims 6–9 were not proven unpatentable in either IPR. In the ’626 IPR the Board declined to consider certain reply arguments from Apple about Martin; in the ’627 IPR it adopted Andrea’s construction of “periodically” as “at regular intervals of time.”
- Apple appealed both IPR outcomes: it argued the Board abused its discretion by refusing to consider its ’626 reply arguments, and separately challenged the Board’s construction and factual findings in the ’627 IPR.
- The Federal Circuit vacated the Board’s decision in the ’626 IPR and remanded for reconsideration of Apple’s reply arguments, finding the Board abused its discretion in excluding responsive reply material. The court affirmed the Board’s ’627 IPR decision, including the construction of “periodically” and the Board’s factual conclusions that Helf (alone or with Martin) did not disclose or render obvious the “periodically” limitation.
Issues
| Issue | Apple’s Argument | Andrea’s Argument | Held |
|---|---|---|---|
| Whether the Board abused its discretion by refusing to consider Apple’s reply arguments in the ’626 IPR | Reply merely elaborated on the same Martin-based obviousness theory and properly responded to Andrea’s Patent Owner Response; exclusion was improper | Apple’s petition relied on a W=1 (no sub-window) scenario; Apple’s W≥2 reply raised a new theory not in the petition | Vacated Board’s ’626 IPR decision; court held the Board abused its discretion and must reconsider Apple’s reply arguments (responsive to Patent Owner Response) |
| Proper construction of the claim term “periodically” | Should encompass both “at regular intervals” and the broader “from time to time” (per dictionary) | Should be limited to “at regular intervals of time,” consistent with the specification’s example (“every 5 seconds”) | Affirmed Board’s construction: “periodically” means “at regular intervals of time” |
| Whether Helf anticipates claims 6–9 under the Board’s construction | Helf’s running minimum estimator sets Nk to Mk (in some modes) and in some circumstances sets it after 10 seconds; that is “periodic” | Helf’s running-minimum updates do not occur at regular intervals; updates are conditional and not regular | Substantial evidence supports PTAB: Helf does not anticipate claims 6–9 under the “at regular intervals” construction |
| Whether Helf combined with Martin renders claims 6–9 obvious (motivation to combine/modify Helf to update minima periodically) | A POSA would modify Helf (in light of Martin) to update minima at regular intervals or after ten seconds | No adequate motivation or reasoned rationale to modify Helf’s running-minimum estimator to update at fixed regular intervals | Affirmed: substantial evidence supports PTAB’s conclusion that a POSA would not be motivated to combine Martin and Helf to achieve the claimed periodic updates |
Key Cases Cited
- Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374 (Fed. Cir. 2018) (standard for Board’s discretion reviewing reply/new‑theory determinations)
- Intelligent Bio‑Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016) (limitations on reply when petitioner raises new references or new rationale)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (reply relying on previously unidentified portions of prior art may be new matter)
- Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018) (new evidence on reply may be permissible if it legitimately rebuts patent owner’s response)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (U.S. 2015) (claim construction review standards; subsidiary factual findings review)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims construed in view of specification and prosecution history)
- In re CSB‑System Int’l, Inc., 832 F.3d 1335 (Fed. Cir. 2016) (claim construction standard for expired patents in IPRs)
- Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919 (Fed. Cir. 2019) (parties may elaborate on arguments previously raised)