Parkervision, Inc. v. Qualcomm Incorporated (No. 2017-2012, -2013, -2014, -2074, 9/13/18) (O'Malley, Reyna, Taranto)
O’Malley, J. Affirming Board decision in IPRs that apparatus claims had been proven to be unpatentable and that method claims had not. The prior art was capable of being operated in accordance with the claims but was also capable of operating in other ways. The Court found that sufficient to invalidate the apparatus, but not the method, claims. “The method claims present a different story, however. While [petitioner] was only required to identify a prior art reference that discloses an apparatus ‘capable of’ performing the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, [petitioner] needed to present evidence and argument that a person of ordinary skill would have been motivated to operate [the prior art] in a manner that satisfied the [claim] limitation.” The Court also addressed the difference between “configured” and “capable” claim limitations. “In other words, we found that, where an apparatus needed to be altered in order to be ‘configured’ as claimed and there was no evidence of such alteration, it does not infringe those claims… In contrast, where claim language recites ‘capability, as opposed to actual operation,’ an apparatus that is ‘reasonably capable’ of performing the claimed functions ‘without significant alterations’ can infringe those claims.”
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