Parker Vision on Functional Claim Limitations
| September 28, 2018
ParkerVision, Inc. v. Qualcomm Incorporated
September 13, 2018
Before O’Malley, Reyna and Taranto. Precedential Opinion by O’Malley, joined by Reyna and Taranto.
Summary:
Qualcomm filed three inter partes review proceedings challenging the validity of claims of ParkerVision’s U.S. Patent No. 6,091,940 (the ‘940 patent) based on obviousness. ParkerVision appealed the PTAB’s decision holding apparatus claims of the ‘940 patent as being obvious, and Qualcomm cross-appealed the PTAB’s decision holding method claims of the ‘940 patent as being not obvious. On the one hand, the CAFC affirmed that the apparatus claims were invalid, denying ParkerVision’s argument that Qualcomm had not identified conditions in which the prior art device would operate to perform a function of generating “a plurality of harmonics” within the apparatus claim, explaining that only the capability to perform the function is required for an apparatus claim. On the other hand, the CAFC affirmed that the method claims were not invalid, denying Qualcomm’s cross-appeal for failing to provide any argument or evidence as to why a person of ordinary skill would have selected operating conditions that would cause the prior art to perform the function of creating “a plurality of harmonics” as claimed.
Details:
- Background
Qualcomm filed three inter partes review proceedings before the Patent Trail and Appeal Board (PTAB) challenging the validity of claims of ParkerVision’s U.S. Patent No. 6,091,940 (the ‘940 patent) based on obviousness over a plurality of references. ParkerVision appeals the PTAB’s decision holding apparatus claims of the ‘940 patent as being obvious. Qualcomm cross-appeals the PTAB’s decision holding method claims of the ‘940 patent as being not obvious.
The ‘940 patent is for a “Method and System for Frequency Up-Conversion.” The ‘940 patent issued July 18, 2000 with a total of 374 claims (including 6 independent apparatus claims and 3 independent method claims), wherein 6 independent claims and 55 dependent claims were at issue in the proceedings.
The ‘940 patent relates generally to cellular phones and other telecommunication devices in which low-frequency signals are “up-converted” to higher-frequency signals, such as, e.g., radio frequency (RF) signals to allow the signal to be more efficiently transmitted to a receiver. The specification explains that prior art transmitters were costly in terms of power consumption and price. The devices modulate the amplitude of a baseband signal and generate a signal having a modulated amplitude along with a periodic signal having a plurality of unwanted harmonics which are filtered out. Thereafter, the resulting signal is transmitted.
Representative independent claims noted by the CAFC are listed below:
- The CAFC’s Decision
Apparatus Claims:
With respect to the apparatus claims, ParkerVision argued that Qualcomm had not identified conditions in which the prior art device would operate to produce a plurality of harmonics, and asserted that the cited art, thus, didn’t “generate a periodic signal having a plurality of harmonics” as claimed.
However, the CAFC noted that it was “undisputed that [the prior art] device necessarily will produce a periodic signal that contains integer multiples of the fundamental frequency under some, albeit not all, conditions.”
Therefore, the CAFC affirmed the PTAB’s decision that the apparatus claims were obvious over the prior art.
The CAFC explained that “apparatus claims cover what a device is, not what a device does,” citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990). “[A]n apparatus that is “capable of” performing certain functions may be anticipated by or obvious in view of a prior art apparatus that can likewise perform these functions,” further citing Finjan, Inc. v. Secure Computing Corp., 946 F.2d 821 (Fed. Cir. 1991).
“[A]n accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation.” “[T]o infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode.” Id.
“[W]here claim language recites ‘capability as opposed to actual operation,’ an apparatus that is ‘reasonably capable’ of performing the claimed functions ‘without significant alternations’ can infringe those claims,” citing Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014).
Method Claims:
With respect to the method claims, Qualcomm argued that the prior art “taught a plurality of harmonics.” However, the CAFC affirmed the PTAB’s decision that Qualcomm “failed to provide any argument or evidence as to why a person of ordinary skill would have selected operating conditions that would cause [the prior art] to generate a plurality of … harmonics” as claimed.
The CAFC explained that in contrast to an apparatus claim, which “only require[s]” “a prior art reference that discloses an apparatus ‘capable’ of performing the recited functions,” for a method claim one needs “evidence … that a person of ordinary skill would have been motivated to operate” the prior art in the manner claimed (i.e., in “a manner that satisfied the plurality of harmonics limitation”).
Here, the Court affirmed the PTAB’s finding that “Qualcomm’s petitions were deficient because they ‘did not speak to whether a person of ordinary skill in the art would have reason to’ operate [the prior art] with inputs that would produce the required “plurality of harmonics.”
Thus, the Court held that the method claims were not obvious over the cited references.
Takeaways:
- Although Patent Examiners often disregard features that are claimed “functionally,” this case reminds us that “[f]eatures of an apparatus claim may be recited either structurally or functionally.” See M.P.E.P. 2114 (emphasis added).
- This case also reminds us that unless the prior art device is ‘reasonably capable’ of performing the claimed functions of an apparatus claim ‘without significant alternations’ (e.g., unless a functional feature is inherently capable of being performed by a prior art device), then the claim is patentable over that prior art.
- This case also highlights that to sustain a rejection of a method claim, mere capability of performing a function is insufficient; there must be a teaching or motivation to perform the claimed function. Notably, as illustrated in the ParkerVision decision, in some instances where apparatus claims may be unpatentable over prior art that inherently is capable of performing a function, method claims may potentially be patentable over that prior art if there is no teaching or motivation for performing the recited function.
