Qualcomm Incorporated v. Intel Corporation, 20-1589

Background

Patent No. 9,608,675 claims a system that computes a single power-tracking signal from multiple carriers’ I/Q components and generates a single power-supply voltage for a single power amplifier to transmit aggregated carriers simultaneously.
Intel filed six IPR petitions challenging the ’675 patent; both parties (and the ITC in a parallel matter) treated the claim term “a plurality of carrier aggregated transmit signals” as requiring signals that increase or extend user bandwidth.
At the IPR oral hearing a Board judge briefly questioned Intel about the bandwidth requirement; Intel said it would be comfortable if the Board removed that phrase. Qualcomm was not asked about the bandwidth issue.
The Board’s final written decisions construed “a plurality of carrier aggregated transmit signals” as merely “signals for transmission on multiple carriers” (omitting the agreed increased-bandwidth requirement) and found the challenged claims obvious; in three decisions the Board treated a “means for determining a single power tracking signal” as a means-plus-function term and identified power tracker 582 (circuitry) as the corresponding structure.
Qualcomm appealed, arguing (1) the Board violated APA/due-process notice-and-opportunity requirements by departing from the parties’ agreed construction without notice and (2) the Board erred by not requiring disclosure of an algorithm as part of the corresponding structure for the means-plus-function power-tracker limitation.
The Federal Circuit vacated and remanded the Board’s final written decisions for lack of notice/opportunity regarding the omitted bandwidth requirement, but upheld the Board’s identification of circuitry (power tracker 582) as the corresponding structure and rejected a requirement to include an algorithm for that circuitry.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Board’s sua sponte omission of an agreed claim limitation ("increase bandwidth") violated APA/due process by denying Qualcomm notice and an opportunity to respond	Qualcomm: Parties and the ITC agreed claim requires increased bandwidth; Board’s departure without notice prejudiced Qualcomm and denied opportunity to develop evidence	Intel: Hearing, exchanged comments, and ability to seek rehearing provided adequate notice/opportunity; Qualcomm must show prejudice	Court: Board violated APA/due process — failure to provide notice/opportunity prejudiced Qualcomm; vacated and remanded
Whether means-plus-function claim’s corresponding structure must include disclosed algorithms when the specification identifies circuitry (power tracker 582)	Qualcomm: Even if circuitry, algorithm disclosure is required to limit the claim when function could require special programming	Intel: Power tracker is circuitry, not a general-purpose computer, so no algorithm disclosure requirement; structure in spec suffices	Court: Affirmed Board — power tracker 582 is circuitry (not a general-purpose computer) so no algorithm requirement applies

Key Cases Cited

Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir.) (patent owner entitled to notice and opportunity to meet grounds in IPR)
Dell Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir.) (agency must allow opportunity to supply evidence; vacatur for procedural violation when new theory arises at hearing)
Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024 (Fed. Cir.) (Board may adopt an unproposed claim construction in some circumstances)
WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir.) (Board not bound to adopt either party's preferred construction; discussion of notice/prejudice)
SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir.) (parties may reasonably rely on Board’s institution-stage interpretation when no dispute is raised)
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir.) (a general-purpose computer becomes special-purpose when programmed; algorithm disclosure may be required in means-plus-function claims)
Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir.) (disclosing only a general-purpose computer does not satisfy means-plus-function corresponding-structure requirement)
In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir.) (algorithm disclosure not required when function can be performed by a general-purpose computer without special programming)
Nevro Corp. v. Boston Sci. Corp., 955 F.3d 35 (Fed. Cir.) (no algorithm requirement where identified structure is not a general-purpose computer)
TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350 (Fed. Cir.) (sua sponte constructions can be acceptable when patent owner had notice and opportunity to respond)
Darby v. Cisneros, 509 U.S. 137 (U.S.) (courts may not impose exhaustion requirement when agency action is final)