PTAB decision vacated & remanded by federal circuit

PTAB decision vacated & remanded by federal circuit

“The Federal Circuit concluded that by adopting a claim construction proposed after the institution and then preventing Apple from responding to it, the Board failed to provide Apple with the ‘adequate notice and an opportunity to respond’ mandated by the APA and the Axonics decision.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding. The Board erred by refusing petitioner Apple Inc. an adequate opportunity to respond to a new claim construction argument raised by patent owner Smart Mobile Technologies LLC after the IPR was instituted; the court concluded.

US patent number 9,191,083 owned by Smart Mobile - described as a ‘portable and wireless’ enabled network box designed to transmit and receive multiple data streams at the same time - was challenged by Apple. The technology in question involves using ‘plurality of antennas’ to handle simultaneous data streams. The Board finally determined that Apple had not shown by a preponderance of the evidence that the challenged claims of the ‘083 patent were unpatentable as obvious after instituting the IPR.

The term ‘plurality of antennas’ was construed by the Board as requiring ‘a set of antennas in which at least some of the antennas are for both transmitting and receiving’. This implied that at least some of the antennas needed to be bidirectional, capable of both sending and receiving signals. Apple’s argument that the claim language could also cover a system with two separate sets of antennas, one for transmitting and another for receiving, was rejected by the Board.

The Board’s claim construction was agreed with by the Federal Circuit. Judge Stoll reportedly explained that “the plain language of the claims, read in the context of the Specification” supported the Board’s conclusion. The court observed that the patent’s specification “repeatedly and consistently describes using the same antennas for both transmitting and receiving data streams.” While it is improper to import limitations from the specification into the claims, the Board’s interpretation was consistent with the intrinsic evidence, the court affirmed.

The Federal Circuit however ruled in favour of Apple on the procedural issue. The Board had improperly refused to consider its alternative argument that even under the Board’s narrower construction, a prior art reference known as Paulraj satisfied the bidirectional antenna limitation, Apple argued.

“This case falls squarely under Axonics,” the court explained. In Axonics, it was established by the Federal Circuit that “where a patent owner in an IPR first proposes a claim construction in a patent owner response, a petitioner must be given the opportunity in its reply to argue and present evidence… under the new construction”.

By adopting a claim construction proposed after the institution and then preventing Apple from responding to it, the Board failed to provide Apple with “adequate notice and an opportunity to respond” mandated by the APA and Axonics decision; the Federal Court concluded. The PTAB’s final written decision was vacated by the Federal Circuit and the case was remanded with no costs awarded to either party.