IPR Amendments: Broader is Broader (even narrowly so).
| September 15, 2023
Sisvel International S.A. v. Sierra Wireless, Inc, Telit Cinterion Deuschland GMBH
Decided: September 1, 2023
Before Prost, Reyna and Stark. Authored by Stark.
Summary: Sisvel appealed a PTAB IPR decision based on claim construction and denial of entry of a claim amendment for broadening the claim. The CAFC affirmed the Board on both counts, noting that broad disclosures in the specification will lead to a broad interpretation of the claims, and that claim amendments which encompass embodiments that would come within the scope of the amended claim but would not have infringed the original claim will be considered broadening.
Background:
In an IPR involving Sisvel’s patent claims 10, 11, 13, 17, and 24 of U.S. Patent No. 7,433,698 (the “’698 patent”) and claims 1, 2, 4, and 13-18 of U.S. Patent No. 8,364,196 (the “’196 patent”), the PTAB had found all claims unpatentable as anticipated and/or obvious in view of certain prior art.
The issues centered on the phraseology in the claims regarding the “connection rejection message” being used to direct a mobile communication means to attempt a new connection with certain parameter values such as a certain carrier frequency.
Claim 10, reproduced below, was the primary representative claim used by the CAFC:
10. A channel reselection method in a mobile communication means of a cellular telecommunication system, the method comprising the steps of:
receiving a connection rejection message;
observing at least one parameter of said connection rejection message; and
setting a value of at least one parameter for a new connection setup attempt based at least in part on information in at least one frequency parameter of said connection rejection message.
On appeal, Sisvel challenged the Board’s construction of the single claim term, “connection rejection message.”
Sisvel also challenged the Board’s denial of their motion to amend the claims on the basis that the amendment enlarged their scope.
Decision:
(a) Claim construction of “connection rejection message”
Sisvel appealed the Board’s construction of giving “connection rejection message” its plain and ordinary meaning of “a message that rejects a connection.” Sisvel’s purported a construction of “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station.” However, the PTAB found that such a construction would improperly limit the claims to embodiments using a Global System for Mobile Communication (“GSM”) or Universal Mobile Telecommunications System (“UMTS”) network.
Sisvel argued that UMTS and GSM “are the only specific networks identified by [the] ’698 and ’196 patents that actually send connection rejection messages” provided for in their specification.
The CAFC, in required fashion, reiterated the Phillips claim-construction standard – whereby “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history,” citing Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)) 669 F.3d at 1365.
After reviewing, the Court found that the intrinsic evidence provided no persuasive basis to limit the claims to any particular cellular networks. They noted that the specification, while only expressly disclosing embodiments in a UMTS or GSM network, in fact still included broad teachings directed to any network. The CAFC affirmed the Board, noting that a person of ordinary skill in the art would not read the broad claim language, accompanied by the broad specification statement to be limited to GSM and UMTS networks.
(b) IPR Amendment
The Court also considered Sisvel’s contention that the Board erred during the IPR by denying its motion to amend the claims of the ’698 patent. The Board had denied Sisvel’s motion, concluding that the amendments to original claim 10 would have impermissibly enlarged claim scope. Original claim 10 and substitute amended claim 36 read as follows:
The Court first noted that broadening claims are not allowable during an IPR in the same fashion as in a Reissue or Reexamination proceeding at the USPTO. They further delved into the law of what constitutes a broadening of a claim noting that a claim “is broader in scope than the original claim if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent” citing Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 74 (Fed. Cir. 1999).
The Court further remarked that it is Sisvel’s burden, as the patent owner, to show that the proposed amendment complies with relevant regulatory and statutory requirements, citing to 37 C.F.R. § 42.121(d)(1) (“A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the [applicable] requirements . . . .”).
The PTAB’s denial had focused on the last (“setting a value”) limitation, comparing the original claim’s requirement that the value be set “based at least in part on information in at least one frequency parameter” of the connection rejection message, while in the substitute claims the value may be set merely by “using the frequency parameter” contained within the connection rejection message. The Board had concluded that “[i]n proposed substitute claim 36, the value that is set need not be based, in whole or in part, on information in the connection rejection message and, thus, claim 36 is broader in this respect than claim 10.” J.A. 73.
The Court agreed with the PTAB’s reasoning that, in the context of these claims, “using” is broader than “based on” and that whereas the original claim language required that the value in a new connection setup attempt be at least in some respect impacted by (i.e., “based” on) the frequency parameter, the substitute claim removes this requirement. They concluded that this removal of a claim requirement can broaden the resulting amended claim, because it is conceivable there could be embodiments that would come within the scope of substitute claim 36 but would not have infringed original claim 10, citing Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001) (“A reissue claim that does not include a limitation present in the original patent claims is broader in that respect.”).
Take aways:
- The Phillips standard is reiterated with the Court finding that even general disclosures within a specification (i.e. not supported by any embodiments) will provide sufficient intrinsic evidence that a skilled artisan will be considered to interpret the claim language to encompass the general disclosures.
- Drafting claim amendments in a post-grant proceeding at the USPTO must be done with extreme care. Any logically conceivable interpretation of the amendment whereby embodiments would come within the scope of substitute claim but would not have infringed the original claim will be considered broadening.
When Motion to amend is filed in IPR, Opponent can cite additional references.
| July 18, 2017
Shinn Fu vs. Tire Hanger (Fed. Cir. 2017)
July 3, 2017
Before Prost, Reyna and Taranto. Opinion by Prost
Summary:
This is an appeal from an inter partes review (IPR) of USP 6,681,897 (“’897 patent”). The patentee filed a motion to amend. Petitioner opposed to the motion and presented arguments of unpatentability adding new references. The Board ignored Petitioner’s argument and granted the patent owner’s motion to amend and held the substitute claims patentable.
CAFC vacated and remanded holding that the Board did not properly consider the petitioner’s arguments in opposition to the Patentee’s motion to amend.
この事件は、米国特許6,681,897の当事者系レビュー(IPR)の決定の不服申立に関する。特許権者はIPRでクレームを補正する申立をした。請求人は先行技術引例を追加して補正クレームは特許性がないと主張した。審判部は、補正に対する請求人の主張を無視し、補正クレームは特許性ありとして補正を認めた。
CAFCは、審判部が、補正の申立に反対する主張を考慮しなかったのは不当であるとして、審決を取消し、補正に反対する主張の審理のため差戻した。
