Qualcomm wins appeal against Intel

Qualcomm wins its appeal at the CAFC:

Qualcomm Inc. appeals six inter partes review final written decisions from the Patent Trial and Appeal Board determining that claims 1–15, 17–25, and 27–33 of U.S. Patent No. 9,608,675 would have been obvious. We vacate and remand.

Procedural issue:

Qualcomm argues that it was not afforded notice of, or an adequate opportunity to respond to, the Board’s construction of “a plurality of carrier aggregated transmit signals.” It also challenges the Board’s construction of the power tracker limitation for failing to include an algorithm in the corresponding structure.2 We agree the Board violated Qualcomm’s procedural rights with respect to the “plurality of carrier aggregated transmit signals” limitation. We see no error, however, in the Board’s construction of the power tracker limitation in claim 28.
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We explained that it “is difficult to imagine either party anticipating that already-interpreted terms were actually moving targets,” and, thus, it is unreasonable to expect parties to “have briefed or argued, in the alternative, hypothetical constructions not asserted by their opponent.” Id. Here, the patent owner agreed with the increased bandwidth requirement proposed by the petitioner. 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. And, unlike with disputed terms, it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction. This is particularly true here given that a separate agency (the Commission) had already adopted the increased bandwidth requirement for the claim term. Accordingly, under the circumstances of this case, the Board needed to provide notice of and an adequate opportunity to respond to its construction. (...)
Indeed, Qualcomm stated that it would have wanted to introduce extrinsic evidence into the record, including LTE specifications referenced in the specification, to support the increased bandwidth requirement. See ’675 patent at 2:63–67; Oral Argument at 10:40–11:07, http://oralarguments.cafc. uscourts.gov/default.aspx?fl=20-1589_02032021.mp3. Accordingly, the hearing did not provide an adequate opportunity to respond. (...)
We have generally held that a party need not seek rehearing in order to seek relief from a Board decision on appeal. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1377 (Fed. Cir. 2016) (“Nowhere does the statute granting parties the right to appeal a final written decision in an IPR require that the party first file a request for rehearing before the Board . . . .”); see also 35 U.S.C. § 141(c) (“A party to an inter partes review . . . who is dissatisfied with the final written decision of the [Board] under section 318(a) . . . may appeal the Board’s decision . . . .”). We have also vacated Board decisions for violating a patent owner’s procedural rights where the patent owner never requested a rehearing. See, e.g., Dell, 818 F.3d at 1301–02 (vacating a Board decision for violating a patent owner’s procedural rights, even though the patent owner did not request rehearing); In re NuVasive, Inc., 841 F.3d 966, 975 (Fed. Cir. 2016) (same). Finally, we “are not free to impose an exhaustion requirement as a rule of judicial administration where the agency action has already become ‘final’” under the APA.4