Friday, September 14, 2018

ParkerVision loses appeal of PTAB decision at CAFC

The outcome:

ParkerVision, Inc. (“ParkerVision”) appeals from
three final written decisions of the U.S. Patent Trial and
Appeal Board (“Board”) in related inter partes review
proceedings, in which the Board held certain claims of
U.S. Patent No. 6,091,940 (“the ’940 patent”) unpatentable
as obvious under 35 U.S.C. § 103(a).1 Qualcomm Inc.
and Qualcomm Atheros, Inc. (together, “Qualcomm”)
cross-appeal from the Board’s determination that Qualcomm
failed to prove by a preponderance of the evidence
that certain other claims of the ’940 patent are unpatentable.
We affirm.

The appealed matter:

ParkerVision argues on appeal that the Board erred
in holding the apparatus claims challenged in the Nozawa
IPRs unpatentable, while Qualcomm contends in its crossappeal
that the Board erred in upholding the patentability
of the challenged method claims. We address these
arguments in turn.

The CAFC noted

We explained long ago that “[a]pparatus claims cover
what a device is, not what a device does.” HewlettPackard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). As a result, “[a]n invention need not
operate differently than the prior art to be patentable, but
need only be different”—or, rather, “unobviously different.”
Id. at 1464 & n.2 (citations omitted). A corollary of
these principles is that an apparatus that is “capable of”
performing certain functions may be anticipated by or
obvious in view of a prior art apparatus that can likewise
perform these functions. See Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (explaining
“that, to infringe a claim that recites capability
and not actual operation, an accused device ‘need only be
capable of operating’ in the described mode.” (quoting
Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832
(Fed. Cir. 1991))). Indeed, “depending on the claims, ‘an
accused device may be found to infringe if it is reasonably
capable of satisfying the claim limitations, even though it
may also be capable of noninfringing modes of operation.’”
Id. (citations omitted). Similarly, a prior art
reference may anticipate or render obvious an apparatus
claim—depending on the claim language—if the reference
discloses an apparatus that is reasonably capable of
operating so as to meet the claim limitations, even if it
does not meet the claim limitations in all modes of operation.


Here, the apparatus claims are most similar to those
in Ericsson and are fundamentally dissimilar to those in
Ball Aerosol. The ’940 patent’s apparatus claims are
drawn to “[a]n apparatus for frequency up-conversion”
(claim 4) or “[a]n apparatus for communicating” (claim
22), all of which comprise “a switch module to receive” an
oscillating signal and a bias signal, wherein the oscillating
signal “causes said switch module to gate said bias
signal and thereby generate a periodic signal having a
plurality of harmonics.” ’940 patent, col. 67, ll. 25–33
(emphases added); id. col. 69, ll. 19–32 (emphases added).
Accordingly, just as D-Link’s products only required a
component that was reasonably capable of “arranging
information for transmission . . . which identifies a type of
payload information . . . ,” Ericsson, 773 F.3d at 1217,
Nozawa’s circuit requires only an oscillating signal that is
reasonably capable of gating the bias signal in a manner
that generates a periodic signal having a plurality of
harmonics. And, unlike in Ball Aerosol, the claims here
recite no structural limitations that would preclude a
prior art reference that discloses a different structure
from performing the claimed function.

But Qualcomm loses the cross-appeal

The method claims present a different story, however.
While Qualcomm was only required to identify a prior art
reference that discloses an apparatus “capable of” performing
the recited functions to prove that the apparatus
claims would have been obvious, more was required with
respect to the method claims. Specifically, Qualcomm
needed to present evidence and argument that a person of
ordinary skill would have been motivated to operate
Nozawa in a manner that satisfied the “plurality of harmonics”
limitation. See InTouch Techs., Inc. v. VGO
Commc’ns, Inc., 751 F.3d 1327, 1346–47 (Fed. Cir. 2014)
(explaining that a party seeking to invalidate method
claims on obviousness grounds must “demonstrate . . .
‘that a skilled artisan would have been motivated to
combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in
doing so’”). Qualcomm failed to do so.


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