The U.S. Patent Trial and Appeal Board (PTAB) violated Qualcomm Incorporated’s procedural rights under the Administrative Procedure Act, the Federal Circuit Court of Appeals ruled on Tuesday. The dispute arose from several inter partes reviews initiated by Intel Corporation, one concerning the validity of a Qualcomm power generation patent.
According to the opinion, “the ’675 patent relates to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously, using one power amplifier and one power tracking supply generator.” The claimed invention purports to “increase bandwidth, reduce the number of needed circuit components, reduce power consumption, improve the efficiency of power amplifiers, and provide other advantages,” the appellate panel wrote.
Intel contended that the ’675 patent was unpatentable as obvious. In the PTAB proceeding, the parties agreed that the underlying disputed term “a plurality of carrier aggregated transmit signals,” was subject to an increased user bandwidth requirement.
In finding all of the challenged claims unpatentable, the PTAB construed the aforementioned term to mean “signals for transmission on multiple carriers,” the Federal Circuit noted, critically “omitting any requirement that the signals increase or extend bandwidth.” Qualcomm contested the decision, arguing that it was not afforded notice of, or an adequate opportunity to respond to the PTAB’s construction of the disputed term.
The panel agreed, finding that the PTAB’s construction presented Qualcomm with a procedurally unfair “moving target.” The lower tribunal’s construction “diverged from the agreed-upon increased bandwidth requirement for the term; it did not merely adopt its own construction of a disputed term,” the opinion said.
According to the panel, the PTAB needed to have provided notice of and an adequate opportunity to respond to its construction. Among other determinations, the appellate judges also held that Qualcomm established that it was prejudiced by the construction determination and not afforded an adequate opportunity to respond at the PTAB hearing.
Because of the APA violations, the court vacated and remanded the case in favor of appellant Qualcomm, represented by Wilmer Cutler Pickering Hale and Dorr. Appellee Intel is represented by Jones Day.