Ipcom Gmbh & Co. v. Htc Corporation
861 F.3d 1362
| Fed. Cir. | 2017Background
- IPCom owns U.S. Patent No. 6,879,830, which claims methods/systems for handing over a mobile station (MS) from a first base station (BS1) to a second base station (BS2), including maintaining link data/resources at BS1 and an "arrangement for reactivating the link" if handover fails.
- HTC requested inter partes reexamination of many claims of the ’830 patent; the PTO Examiner and PTAB reviewed the claims through two rounds. The Board eventually rejected multiple claims as obvious over McDonald, Anderson, GSM, and PACS.
- The disputed claim language includes a means-plus-function limitation "an arrangement for reactivating the link," plus limitations covering a forced handover request, a handover query, a rejection message, informing the mobile station whether link transfer is possible, and using different generations of radio standards.
- IPCom argued the Board lacked jurisdiction to reconsider claims 31–37 after prosecution was reopened and argued that the Board failed to identify the specification structure/algorithm corresponding to the means-plus-function limitation under 35 U.S.C. § 112 ¶ 6.
- The PTAB found PACS discloses the forced handover, query, and rejection messages; McDonald and Anderson disclose unsuccessful and successful handovers (informing the mobile station); GSM discloses multi‑generation base‑station operation; and the Board found motivation to combine those references.
- The Federal Circuit: (1) affirmed the Board’s ability to consider GSM and PACS and to review amended claims including claims 31–37; (2) vacated and remanded the obviousness findings tied to the means‑plus‑function "arrangement for reactivating the link" because the Board failed to identify the corresponding algorithm; (3) affirmed the Board’s obviousness findings as to the other disputed limitations and motivation to combine.
Issues
| Issue | IPCom's Argument | HTC's Argument | Held |
|---|---|---|---|
| Proper construction of the means‑plus‑function limitation "arrangement for reactivating the link" (§112 ¶6) | The specification discloses a three‑step algorithm and the Board should adopt IPCom’s construction | Prior art/Board argued steps were not all required; treated limitation more generally | Vacated the PTAB obviousness findings tied to this limitation; remanded for the Board to identify the corresponding structure/algorithm in the specification and compare prior art to it |
| Board’s jurisdiction to consider claims 31–37 after prosecution reopened | Board lacked jurisdiction because HTC did not challenge those claims in the first appeal | Reopening prosecution amended claims (directly or indirectly), opening them to challenge; HTC timely raised references in response to amendments | Affirmed Board had authority to consider claims 31–37 after IPCom reopened prosecution and amended claims |
| Whether PACS, McDonald, Anderson, GSM disclose specific claim limitations (forced handover, query, rejection, informing MS, multi‑generation operation) | IPCom disputed some overlaps (e.g., PACS lacks reactivation tied to forced handover; claims requiring base stations unable to communicate) | Prior art discloses PERFORMALT/ALTREQ/ALT_DENY (PACS), busy OSW (McDonald), successful handover signaling (Anderson), multi‑generation MS (GSM) | Affirmed: substantial evidence supports PTAB that PACS discloses forced handover/query/rejection; Anderson+McDonald disclose informing the mobile station; GSM supports different‑generation base stations; claims 5–17 and 25 found obvious |
| Motivation to combine McDonald, Anderson, GSM, PACS into claimed system | Combination reflects impermissible hindsight; references describe different control models (mobile vs network) so combination unpredictable | References address the same problem (failed handovers) and their teachings are complementary/predictable; standards encouraged such combinations | Affirmed: substantial evidence supports Board’s finding of motivation to combine; combination would yield predictable result, consistent with KSR |
Key Cases Cited
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (deferring to PTAB broadest reasonable interpretation in PTO proceedings)
- SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (review standards for claim construction and intrinsic evidence)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (standard of review for PTAB factual findings/substantial evidence)
- In re Donaldson Co., 16 F.3d 1189 (means‑plus‑function requires specification disclosure of corresponding structure/algorithm)
- HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270 (earlier Federal Circuit decision requiring adequate algorithm disclosure for the same patent)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (obviousness: predictable results and motivation to combine)