Our case this week, at first glance, features a typical appeal from the Patent Trial and Appeal Board and the construction of the jingle-worthy term “connection rejection message” in the context of two patents involving cellular telecommunications systems. But as discussed below, what may be most interesting about the case is the Court’s guidance on procedure and standards of review.
Case of the (recent-ish) week: Sisvel Int’l S.A. v. Sierra Wireless, Inc., 22-1387 (September 1, 2023)
Panel: Judges Prost, Reyna, and Stark, with Judge Stark writing the opinion
You should read this case if: you have matters involving a motion to amend, claim construction or scope—or you just love administrative law.
To cut to the chase on outcome here, the Federal Circuit affirmed the Board’s holding that “connection rejection message” is not limited to GSM or UMTS networks. In the Court’s view, that issue was not particularly close: while the patents’ embodiments related only to those networks, the specification explicitly stated that there were “many different” networks and that the invention was applicable in “any such” network. The Board and the Federal Circuit thus unsurprisingly declined to import limitations from the specification into the claims.
But as already noted, the Court offered helpful guidance on other issues. First, the Court clarified the requirement that amendments during inter partes review “may not enlarge the scope of the claims of the patents.” 35 U.S.C. § 316(d). The Court held that requirement will be construed identically to the related statutes governing claim reissuance, § 251(d), and examination, § 305.
That was bad news for the patent owner here. During the Board proceeding, the Board denied the motion to amend because it would have enlarged claim scope in at least one respect even though the proposed amendments also narrowed the claims in other respects (e.g., limiting the patent to a specific telecommunications protocol). The Federal Circuit agreed that changing “based at least in part on information in at least one frequency parameter” to “using the frequency parameter” impermissibly broadened the claims. Not only was “using” broader than “basing at least in part,” but the removal of the word “information” meant that embodiments that use the existence of a frequency parameter, but not its informational content, would be within the proposed substitute claim’s scope.
The Federal Circuit emphatically rejected the patent owner’s contention that an amendment should have been allowed because, “when all of the limitations are considered as a whole, the scope of” the substitute claim “is narrower than the scope of” the original claim. The Court instead restated black-letter law: a substitute claim that is “broader in any respect” than the original claim is broader, as a matter of law.
Second, the Federal Circuit corrected both parties’ mistaken belief that its review of the amendment issue was for only substantial evidence. As the Court explained, it reviews the denial of a motion to amend under Section 706 of the Administrative Procedure Act. Given that claim scope “is a matter of claim construction” that the Court reviews de novo, the question is a purely legal one. As “[l]egal error constitutes an abuse of discretion,” the Court would reverse a denial of a motion to amend under the APA’s “arbitrary, capricious, [or] abuse of discretion” standard if it disagreed with the Board’s interpretation of the relative breadth of the original versus substitute claims.
In this case, of course, it did not.