The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed to the exchange of frequency information in connection with cell reselection between a mobile station (or user cell phone) and a central mobile switching center.  On appeal, Sisvel challenged the Board’s (1) construction of a single claim term and (2) denial of Sisvel’s revised motion to amend the claims of one patent.

First, the Federal Circuit agreed with the Board that “connection rejection message” should be given its plain and ordinary meaning of “a message that rejects a connection.”  The panel noted that even though the specification only expressly discloses embodiments directed toward UMTS or GSM cell networks, the language of the specification is permissive, not mandatory.  Accordingly, the panel found interpreting the claim language “connection rejection message” as “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station” would improperly limit the claims to disclosed embodiments.

On the Board’s denial of Sisvel’s motion to amend the claims of one patent at issue, both parties had utilized the “substantial evidence” standard in their arguments (i.e., whether substantial evidence supports the Board’s determination the substitute claims failed to satisfy the applicable statutory requirements).  In agreeing with the Board that the proposed substitute claims would have impermissibly enlarged claim scope, the Federal Circuit emphasized that the appropriate standard of review set out in the Administrative Procedure Act, 5 U.S.C. § 706 (“APA”), is not “substantial evidence” – rather, it is “abuse of discretion.”  In this case, the abuse of discretion standard required the Federal Circuit to determine if the Board abused its discretion by committing legal error in its construction of the scope of the amended claims as compared to the scope of the original claims.  The Federal Circuit ultimately concluded that the Board correctly determined that Sisvel failed to meet its burden to show that the scope of its substitute claims is not broader than the scope of its original claims.  Additionally, the Federal Circuit highlighted that the Board retains authority to reject proposed substitute claims even if it preliminarily indicated it is likely to grant such claims.