Wednesday, May 13, 2020

PTAB's claim construction in Sprint Spectrum vacated by CAFC

The CAFC determined that PTAB erred in claim construction:

Sprint Spectrum L.P. appeals the final written decision
of the Patent Trial and Appeal Board declining to hold certain claims of
U.S. Patent No. 7,230,931 unpatentable on
anticipation and obviousness grounds. Sprint specifically
challenges the Board’s construction of a claim term that
appears in most of the challenged claims. Sprint also challenges the
Board’s determinations relating to the scope of
Sprint’s reply and the scope and content of the asserted
prior art. Because we agree that the Board erred in construing the claim term at issue,
we vacate the Board’s decision as to the applicable claims and remand for
consideration of certain grounds under the proper claim
construction. We affirm the Board’s decision in all other

Note footnote 7:

Per recent regulation, the Board applies the Phillips claim construction standard to IPR petitions filed on or
after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
§ 42.100(b)). Because Sprint filed its IPR petition before
November 13, 2018, we apply the broadest reasonable interpretation standard

Of limitation of invention scope to that of the preferred embodiment:

As we have explained, the scope of an invention
may only be properly limited to the preferred embodiment
“if the patentee uses words that manifest a clear intention
to restrict the scope of the claims to that embodiment.”
Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d
1262, 1267 (Fed. Cir. 2015) (citing Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
The Board identified no manifestation of a clear intention to restrict the scope of the claims to the embodiment
illustrated by Figure 14.

PTAB erred:

We conclude that the Board erred in its overly narrow
construction of the “scanning beam information” limitations in claims 2, 11, and 20. Absent any lexicography or
manifestation of clear intent to limit the scope of “scanning
beam information” to any particular embodiment, the plain
language must control.

Of motivation to combine

Whether there is a
reason to combine is a factual determination that we review for substantial evidence. Rambus Inc. v. Rea,
731 F.3d 1248, 1251–52 (Fed. Cir. 2013). The Board’s finding is supported by substantial evidence because a reasonable factfinder could find no reason to combine based on the
limited argument and evidence presented by Sprint. The
portion of Sprint’s petition addressing claim 2 merely refers back to an earlier analysis for claim element 1[a], as
does the supporting expert declaration. We agree with the
Board that Sprint’s reason to combine analysis for claim
element 1[a]—a different claim limitation covering different subject matter—is “insufficient to explain why one of
ordinary skill would have incorporated Ahy’s disclosure of
[certain parameters relevant to claim 2] into Newman.”
Decision, 2019 WL 1096544, at *13. Sprint complains that
the Board overlooked certain pages of its petition, but the
pages that Sprint identifies on appeal—which address
claim element 1[c]—are not the pages that Sprint identified to the Board. We can hardly fault the Board for focusing on the pages that Sprint actually referenced in its


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