Last Week in the Federal Circuit (July 26-30): Sua sponte claim construction

The Federal Circuit has its August sitting this week—its last before September’s scheduled return to in-person arguments. Before taking the virtual bench for the final time, the Court issued six opinions last week. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. 

Precedential opinions: 3

Non-precedential opinions:

Rule 36: 0

Longest pending case from argument: Military-Veterans Advocacy v. Secretary of Veterans Affairs, No. 19-1600 (296 days) 

Shortest pending case from argument (non-Rule 36): Ortiz v. McDonough, No. 20-1911 (51 days) 

Case of the week: Qualcomm Inc. v. Intel Corp., No. 20-1589 

Panel: Chief Judge Moore and Judges Reyna and Stoll, with Chief Judge Moore writing the opinion 

You should read this case if: you have an IPR in which the Board departed from the parties’ agreed claim construction 

What notice must the PTAB give before adopting a new claim construction not proposed by the parties? More than it did here, the Court held in our case of the week. 

The patent at issue concerns technology for processing multiple radio frequency signals simultaneously. Intel challenged Qualcomm’s patent in several IPRs, and both parties construed the claim term “a plurality of carrier aggregated transmit signals” to mean signals that increase user bandwidth. The Board’s final written decisions, however, construed that term without requiring that the signals increase bandwidth. The Board went on to hold the challenged claims obvious.

The Federal Circuit vacated and remanded, holding that the Board “failed to provide Qualcomm adequate notice of and an opportunity respond to its sua sponte claim construction.” That failure, the Court held, violated the Administrative Procedure Act.

Key to the Court’s analysis was that the Board departed from the parties’ agreed construction. In general, the Court explained, the Board “may adopt a claim construction of a disputed term that neither party proposes.” But here, the relevant point—whether the claimed signals must increase bandwidth—“was not in dispute.” The parties therefore could not have anticipated that this construction “was a moving target.”

The Court rejected the notion that Qualcomm had adequate notice or an opportunity to respond at the oral hearing or by seeking rehearing. At the hearing, one judge had raised the increased-bandwidth requirement in questioning Intel. But the Court emphasized both the brevity and one-sidedness of that questioning: “The Board did not announce a construction, criticize the parties’ agreed-upon requirement, ask any follow-up questions to Intel, or ask any related questions to Qualcomm.” And even aside from the lack of notice, the hearing was an insufficient opportunity to respond because, for example, it gave Qualcomm no chance to submit evidence on the issue. The Court also held that Qualcomm was not required to seek rehearing before arguing on appeal that the Board denied it notice and an opportunity to respond.

The case contains a few other points of interest. First, the Court held that the Board’s procedural error prejudiced Qualcomm, but it left open whether prejudice is required for this sort of procedural error. Second, Qualcomm had raised an Arthrex challenge but ultimately dropped it (a trend we recently discussed). Finally, the last section of the Court’s opinion addressed another interesting issue, which we won’t get into in detail here. In brief, the Court declined to extend to electronic circuits a principle the Court had recognized for computers (namely, in a means-plus-function claim, the corresponding structure includes not just the computer but the computer programmed to carry out a disclosed algorithm for performing the function).