Intellectual Ventures II LLC v. Ericsson Inc.
686 F. App'x 900
Fed. Cir.2017Background
- Intellectual Ventures owns U.S. Patents 7,848,353 and 8,396,079 claiming a method for telling a receiver which bandwidth to use in a multi-bandwidth wireless system (first signal portion conveys an "indication of an operating bandwidth"; further signal portion carries data at that operating bandwidth).
- Board instituted three IPRs challenging various claims as anticipated or obvious over McFarland, Trompower, and Pierzga; Board found the challenged claims obvious.
- Central disputed claim terms: "an indication of an operating bandwidth" and "reconfigurable filters." IV proposed a narrow construction (identification of a particular bandwidth); petitioners/board advocated broader constructions or plain meaning.
- At combined oral arguments the Board proposed a construction focusing on whether the first signal portion contains sufficient information for the receiver to configure itself; IV’s counsel conceded there was no special form required for the indication.
- The Board adopted a construction requiring the first signal portion to contain sufficient information so the receiver can configure itself to receive the data portion at approximately the same frequency range/bandwidth, and held that a single reconfigurable filter could satisfy the claims.
Issues
| Issue | Intellectual Ventures' Argument | Petitioners' / Board's Argument | Held |
|---|---|---|---|
| Did the Board deny due process by adopting a surprise construction? | Board adopted a construction no party advanced; IV lacked notice and chance to respond. | Parties extensively litigated term; Board questioned counsel at oral argument and IV could have sought sur-reply or rehearing. | No due process violation — IV had notice and opportunity to be heard. |
| Construction of "an indication of an operating bandwidth" | Must identify a particular bandwidth (specific lower/upper cutoff frequencies). | Broader: sufficient information conveyed so receiver can configure itself to receive the data at the appropriate frequency range; no special form required. | Affirmed Board: term means the first portion contains sufficient information to allow receiver to configure to receive the further portion at approximately the same frequency range/bandwidth. |
| Construction of "reconfigurable filters" | Requires two distinct filters (one for first portion, one for further portion). | Specification permits either different filters or reconfiguration of the same filter; single reconfigurable filter is encompassed. | Affirmed Board: claim language does not preclude a single, reconfigurable filter; Board's construction reasonable. |
Key Cases Cited
- In re Magnum Oil Int’l, Ltd., 829 F.3d 1364 (Fed. Cir.) (Board may not adopt new arguments it supplied for petitioner that parties had no opportunity to address)
- SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir.) (Board cannot change theories midstream without notice)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction legal review with deference to subsidiary factual findings)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (Board uses broadest reasonable construction in IPR)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir.) (notice required when Board changes theories)
- PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747 (Fed. Cir.) (claim construction should not exclude a preferred embodiment)