ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circuit also engaged in a fact-specific obviousness inquiry regarding capacitor elements disclosed in the prior art.
Background and Procedural History
ParkerVision owned U.S. Patent No. 7,110,444 (the “’444 Patent”), which was directed to frequency translation technology as utilized in wireless local area networks (WLANs). The sole claim at issue recited:
- A wireless modem apparatus, comprising:
- a receiver for frequency down-converting an input signal including,
- a first frequency down-conversion module to down-convert the input signal, wherein said first frequency down-conversion module down-converts said input signal according to a first control signal and outputs a first down-converted signal;
- a second frequency down-conversion module to down-convert said input signal, wherein said second frequency down-conversion module down-converts said input signal according to a second control signal and outputs a second down-converted signal; and
- a subtractor module that subtracts said second down-converted signal from said first down-converted signal and outputs a down-converted signal;
- wherein said first and said second frequency down-conversion modules each comprise a switch and a storage element.
ParkerVision sued Intel for infringement of the ’444 Patent and Intel filed a request for an IPR. The Board granted institution without construing any claim terms, as neither party had raised any claim construction issues.
ParkerVision filed a patent owner response citing, for the first time, U.S. Patent No. 6,061,551 (the “’551 Patent”), a patent that the ’444 Patent incorporated by reference. The ’551 Patent disclosed two distinct types of down-converter modules: energy transfer systems, and under-sampled systems. The ’551 Patent disclosed “energy transfer systems” as comprising “storage modules,” which store non-negligible amounts of energy. In contrast, the ’551 Patent disclosed “under-sampled systems” as comprising “holding modules,” which store negligible amounts of energy.
ParkerVision’s patent owner response relied on the ‘551 Patent’s disclosure to argue that the “storage element” in claim 3 above should be construed as “an element of an energy transfer system that stores non-negligible amounts of energy from an input electromagnetic signal.” The patent owner response further argued that cited prior art Tayloe’s capacitors were not “storage elements” because they were not part of an energy transfer system.
Intel filed a reply arguing that the ’551 Patent did not restrict a “storage element” to being part of an energy transfer system, and therefore prior art Tayloe taught “storage elements” because Tayloe’s capacitors stored a non-negligible amount of energy. Intel’s reply also provided a proposed construction not limiting “storage element” to being part of an energy transfer system.
ParkerVision filed a sur-reply arguing that prior art Tayloe’s capacitors weren’t “storage elements” because they only held a negligible amount of energy. This differed from ParkerVision’s patent owner response, which argued that prior art Tayloe’s capacitors weren’t “storage elements” because they weren’t part of an energy transfer system. Intel moved to exclude these new arguments from ParkerVision’s sur-reply, which the Board granted.
The Board did not accept ParkerVision’s proposed construction limiting “storage element” to being part of an energy transfer system. The Board instead accepted the construction from Intel’s reply brief, construing “storage element” as “an element of a system that stores non-negligible amounts of energy from an input EM signal,” i.e., not limited to energy transfer systems.
The Board issued its final written decision determining claim 3 to be unpatentable as obvious over Tayloe in combination with TI Datasheet (another prior art reference). ParkerVision appealed to the Federal Circuit.
Issues
- Did the Board err in construing “storage element” as not limited to being part of an energy transfer system?
- Did the Board err in considering the proposed construction and arguments in Intel’s reply brief?
- Did the Board err in excluding ParkerVision’s sur-reply arguments addressing the prior art disclosures under Intel’s proposed construction?
Holdings and Reasoning (Circuit Judge Chen, writing the opinion for Prost, Wallach, and Chen)
(1) The Board did not err in construing “storage element” as not limited to being part of an energy transfer system.
The Federal Circuit cited recent case law: “To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1378 (Fed. Cir. 2022) (emphasis added). The Federal Circuit considered the following language from the ’551 Patent as a clear expression of an intent to redefine “storage element”:
[1.] FIG. 82A illustrates an exemplary energy transfer system 8202 for down-converting an input EM signal 8204. [2.] The energy transfer system 8202 includes a switching module 8206 and a storage module illustrated as a storage capacitance 8208. [3.] The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. [4.] Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. [5.] Storage [elements] and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. ’551 Patent, col. 66 ll. 55-64 (emphasis added) (numbering added).
In the Federal Circuit’s view, the ‘551 Patent used reference numerals in sentences [1.] and [2.] to describe a specific embodiment, then the ‘551 Patent used “as used herein” in [3.] to introduce a general definition for “storage [elements]” in [4.] and [5.]; the general definition in [4.] and [5.] is separate from the specific embodiment disclosed in [1.] and [2.]; the contrast drawn between “holding modules” and “storage [elements]” in [4.] and [5.] utilized comparison to define “storage elements” in [5.]; and finally, the “refer to” language in [5.] showed the intention of the ‘551 Patent’s inventor to define “storage elements” as “systems that store non-negligible amounts of energy from an input EM signal.”
The Federal Circuit noted that this construction didn’t contradict other embodiments disclosed in the ’551 Patent, which only depicted “storage elements” in the context of energy transfer systems, because nothing in the ’551 Patent explicitly restricted “storage elements” to being part of energy transfer systems only.
(2) The Board did not err in considering the proposed construction and arguments in Intel’s reply brief.
The Federal Circuit reiterated prior case law holding that IPR proceedings are formal adjudications that must satisfy the Administrative Procedure Act (“APA”). The Federal Circuit noted that, under the APA, the Board must provide all interested parties an opportunity to address newly raised arguments. The Federal Circuit further noted that USPTO Rules dictate that a proper petitioner reply brief may only respond to arguments raised in the corresponding patent owner response, opposition, or decision on institution.
According to the Federal Circuit, because Intel’s reply brief addressed a claim construction first proposed in ParkerVision’s patent owner response, the reply brief was Intel’s first opportunity to address ParkerVision’s new claim construction of “storage elements.” The Board was therefore compelled by the APA to consider the arguments raised in Intel’s reply brief. The Federal Circuit pointed to Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380 (Fed. Cir. 2023) as a recent example where it reversed the Board’s exclusion of reply brief arguments addressing a newly raised claim construction. The Federal Circuit found that Intel’s reply brief did not violate USPTO Rules because Intel’s proposed construction and arguments addressed a construction raised in the patent owner response.
(3) The Board did not err in excluding ParkerVision’s sur-reply arguments addressing the prior art disclosures under Intel’s proposed construction.
The Federal Circuit noted that USPTO Rules dictate that a proper patent owner sur-reply brief may only respond to arguments raised in the corresponding petitioner reply brief. The Federal Circuit found that ParkerVision’s sur-reply arguments did not respond to arguments raised in Intel’s reply brief.
The Federal Circuit explained that the construction raised in ParkerVision’s patent owner response required a storage element to both “be an element of an energy transfer system” and “store non-negligible amounts of energy.” Therefore, the proposed construction in Intel’s reply brief requiring only that storage elements “store non-negligible amounts of energy” did not raise a new argument, as this requirement was already in ParkerVision’s patent owner response. ParkerVision decided to only address whether prior art Tayloe taught that storage elements were elements of an energy transfer system; ParkerVision cannot go back to address whether the storage elements store non-negligible amounts of energy simply because Intel’s reply brief focused on this requirement.
The Federal Circuit finished by agreeing with the Board’s position that, if ParkerVision believed it needed to include arguments and evidence otherwise impermissible in a sur-reply, ParkerVision should have requested authorization for an exception to the USPTO Rules.
