On December 15, 2023, a Panel of the U.S. Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board’s obviousness decision in ParkerVision, Inc. v. Vidal.¹ At issue in this appeal was whether the Board properly construed the claim term “storage element”—which was given a different and broader construction than that of a district court that considered the same patent.² The Panel determined that the Board correctly construed the term and affirmed its obviousness decision, even though the Board’s decision conflicted with a prior district court construction.³

Intel filed a petition for inter partes review of ParkerVision’s patent relating to wireless local area networks that use frequency translation technology.⁴ According to the patent, using frequency translation provides certain advantages, such as “lower power consumption, longer battery life, fewer parts, lower cost, less tuning, and more effective signal transmission and reception.”⁵ The patent describes—and the claim at issue is directed to—“apparatuses for down-converting EM signals.”⁶ At focus in the appeal is the meaning of the claim limitation requiring a “storage element.”⁷ In context, the claim recites “wherein said first and said second frequency down-conversion modules each comprise a switch and a storage element.”⁸

ParkerVision proposed that “storage element” should mean “an element of an energy transfer system that stores non-negligible amounts of energy from an input electromagnetic signal.”⁹ However, the Board agreed with Intel’s proposed construction and instead construed the term to more broadly mean “an element of a system that stores non-negligible amounts of energy from an input EM signal.”¹⁰ In doing so, the Board relied on both the patent’s specification and also that of a different patent that was incorporated by reference in the specification.¹¹ ParkerVision took issue with the Board’s construction and appealed the Board’s final written decision.¹²

At the core of this dispute is the meaning of “storage element.” While the term standing alone may have a plain and ordinary meaning, the Panel explained that this meaning may be displaced “when [the patentee] acts as its own lexicographer or disavows the full scope of the claim term.”¹³ To be its own lexicographer, the “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.”¹⁴

Based on the way the term was used in the patent in suit’s specification, the Panel relied on a paragraph from a different patent that was incorporated by reference to conclude that the patentee “clearly expresses an intent to define the term ‘storage element’….”¹⁵ The incorporated patent was relied on because it further described down-conversion utilizing down-converter modules, specifically under-sampling systems and energy transfer systems, a principal dispute in this case. ¹⁶ Moreover, in considering the critical paragraph of the incorporated patent, the Board determined that the patentee in the incorporated patent intended to act as its own lexicographer based on the use of certain phrases in surrounding sentences.¹⁷ For instance, the critical paragraph utilizes phrases like “as used herein” and “refer to,” which the Board stated “conveys an intent” for the sentence “to be definitional.”¹⁸ Additionally, other sentences further confirmed definitional intent.¹⁹ Those sentences describe a specific embodiment, as well as utilizing reference numerals to describe the embodiment, and as such “do not indicate any intent to provide globally applicable definitions.”²⁰

In disagreement, ParkerVision argued that yet another sentence of the incorporated by reference patent, which states, “storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal,”²¹ demonstrated that the paragraph is “‘comparative, [and therefore] not definitional.’”²² The Panel explained, however, that a passage may be both definitional and comparative.²³ The Panel explained that if the sentence was only comparative, then ParkerVision would have had a stronger argument that the patentee had not acted as its own lexicographer. Here, the Panel was not persuaded by ParkerVision’s argument. ParkerVision also unsuccessfully contended that the specification restricts the term to “an element of an energy transfer system.”²⁴According to the Panel, “nothing in the intrinsic evidence [] demands such a particularized meaning of [the] claim[ed] ‘wireless modem apparatus’ based merely on its recitation of a ‘storage element.’”²⁵

The Panel recognized that the Board’s construction of “storage element” was different from the construction in related district court proceedings, but found that the proffered analysis was not persuasive.²⁶ There, the district court did not find that the patentee acted as its own lexicographer, explaining that “the patentees did not ‘clearly express an intent’ to [define] the term.”²⁷ Ultimately, the Panel determined that the Board’s construction was the correct one, and explained why it concluded that the district court’s construction was erroneous.²⁸ In the Panel’s view, the district court’s analyses were unduly influenced by the energy transfer system embodiments in the incorporated by reference patent.²⁹

The Panel’s decision demonstrates how a patentee may act as its own lexicographer for claim construction purposes, which is based on evidence in the intrinsic record that the patentee intended to do so and a demonstration that the intent was made clear. Under the facts of this particular case, the Panel determined that the patentee departed from a term’s plain and ordinary meaning and acted as its own lexicographer based on the language that was used in the specification. Moreover, to determine the proper definition of the claim term, in this case the Panel agreed with the Board’s reliance on language used in a different patent that was incorporated by reference. In particular, the Panel agreed that the critical paragraph in the incorporated by reference patent clearly expressed an intent to define the term, which then carried over to the term’s meaning in the patent in suit.³⁰ Moreover, the Panel’s decision illustrates that the PTAB and a district court may arrive at different constructions of the same term, which was dispositive in this instance because the PTAB applied a broader claim construction than did the district court. Thus, take-aways from this decision are (i) the potential relevance of language in a patent that is incorporated by reference during claim construction; and (ii) the risk that different forums may reach different claim constructions concerning the same term in the same patent.