The Patent Trial and Appeal Board invalidated parts of Qualcomm’s U.S. Patent No. 9,608,675 after adopting its own construction of a term that neither Qualcomm nor petitioner
The U.S. Court of Appeals for the Federal Circuit agreed with Qualcomm that it wasn’t given notice or an adequate chance to respond to the board’s new construction.
“While the board did not change theories midstream or depart from a construction it previously adopted, it is still difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target,” the Federal Circuit said in a precedential opinion.
Qualcomm’s patent relates to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously. It is meant to increase bandwidth, reduce power consumption, and improve the efficiency of power amplifiers.
The board adopted its own construction of the patent term “a plurality of carrier aggregated transmit signals.”
The board is allowed to adopt a claim construction of a disputed term that neither party proposes without running afoul of the Administrative Procedure Act, the Federal Circuit said.
But Qualcomm agreed with the definition proposed by Intel, so neither party briefed their preferred claim construction.
“Accordingly, under the circumstances of this case, the board needed to provide notice of and an adequate opportunity to respond to its construction,” the court said.
The Federal Circuit found that Qualcomm was prejudiced by the board’s decision “to eschew an agreed-upon requirement without notice,” and that Qualcomm didn’t have a chance to respond.
It sent the case back to the board for further proceedings.
Chief Judge Kimberly A. Moore wrote the opinion, joined by Judges Jimmie V. Reyna and Kara F. Stoll.
Jones Day represented Qualcomm. Wilmer Cutler Pickering Hale and Dorr LLP represented Intel.
The case is Qualcomm Inc. v. Intel Corp., Fed. Cir., No. 20-1589, 7/27/21.