903 F.3d 1354
Fed. Cir.2018Background
- ParkerVision owns U.S. Patent No. 6,091,940 claiming apparatus and method for frequency up‑conversion that use switches gated by an oscillating signal to produce a periodic signal with a “plurality of harmonics.”
- Qualcomm filed three IPR petitions challenging various apparatus and method claims as obvious in combinations including Nozawa, Philips 4052, Maas, Krauss, and Ariie.
- At the PTAB, Board held many apparatus claims unpatentable as obvious (Nozawa and Ariie IPRs) but found Qualcomm had not proven certain method claims unpatentable (Nozawa IPRs) because Qualcomm raised critical operating‑condition arguments only in reply briefs.
- ParkerVision appealed the adverse PTAB findings on apparatus claims and challenged the Board’s reliance on certain Qualcomm theories; Qualcomm cross‑appealed the Board’s preservation ruling on the method claims.
- The Federal Circuit affirmed: it sustained the Board’s obviousness findings as to the apparatus claims and the Ariie combination, and affirmed that Qualcomm failed to prove obviousness of several method claims due to lack of timely evidence showing a skilled artisan would have used operating conditions producing a plurality of integer‑multiple harmonics.
Issues
| Issue | Plaintiff's Argument (ParkerVision) | Defendant's Argument (Qualcomm) | Held |
|---|---|---|---|
| Whether PTAB erred by finding apparatus claims obvious based on Nozawa combination | Qualcomm changed theories and relied on untimely evidence about producing a "plurality of harmonics" | Nozawa (with Philips and Maas) discloses switches that necessarily can produce harmonics; apparatus claims recite capability, not required configuration | Affirmed: substantial evidence supports obviousness of apparatus claims; prior art apparatus capable of producing harmonics is sufficient |
| Whether method claims (requiring operation producing plurality of integer‑multiple harmonics) were shown obvious | Qualcomm argued Nozawa taught plurality of harmonics | Qualcomm failed to show a skilled artisan would be motivated to operate Nozawa under conditions producing the required plurality; raised that theory too late | Affirmed PTAB: Qualcomm did not meet its burden for method claims; petitions lacked motivation/expectation evidence |
| Whether PTAB erred by treating Krauss’s oscillating signal as a proper substitute driving Ariie’s FET and that Ariie’s FET would act as a gate | Ariie’s FET isn’t shown to be a switch gated by Krauss; substitution theory untimely | Petition contemplated substituting Ariie’s mixer into Krauss; Krauss’s rectangular waveform would gate Ariie’s FET and produce plurality of harmonics | Affirmed: substantial evidence supports motivation to combine Krauss and Ariie and that the combination practices the claims |
| Whether PTAB relied on untimely claim construction or new theories in reaching its decisions | Board improperly adopted new constructions/theories not presented in petition or responses | Qualcomm’s petitions sufficiently identified prior art and theory; apparatus claims require capability, not particular configuration | Affirmed: Board did not err in claim construction or in considering Qualcomm’s timely theories for apparatus and Ariie combinations |
Key Cases Cited
- Hewlett‑Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir.) (apparatus claims can cover what a device is or is reasonably capable of doing)
- Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir.) (components described by purpose can show capability for claim limitations)
- Ericsson, Inc. v. D‑Link Sys., Inc., 773 F.3d 1201 (Fed. Cir.) (distinguishing capability language from configuration; reasonable capability can support infringement/anticipation analyses)
- Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984 (Fed. Cir.) (claims specifying a configuration limit scope to that configuration)
- InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir.) (invalidity of method claims requires motivation to combine and reasonable expectation of success)
- Hewlett‑Packard Co. v. Mustek Sys., 340 F.3d 1314 (Fed. Cir.) (prior art device that sometimes practices a claimed method can teach that method if evidence shows it does so in practice)
- Outdry Technologies v. Geox S.p.A., 859 F.3d 1364 (Fed. Cir.) (any sufficient motivation to combine supports an obviousness determination)
- Intelligent Bio‑Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir.) (petition must identify with particularity the evidence supporting each challenged claim)