Not so fast—the PTAB must provide notice and opportunity for litigants to respond to sua sponte decisions

Knobbe Martens

Knobbe Martens


Before Moore, Reyna and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: A party should be given notice and an opportunity to respond before the PTAB sua sponte departs from an uncontested claim construction in a manner that omits an agreed-upon feature of the claim when the absence of that feature in prior art was a central dispute in the proceeding.

Intel initiated six requests for inter partes review of a Qualcomm patent related to increasing bandwidth and decreasing circuitry components.  In each proceeding, the parties never disputed a claim construction that required a signal to increase user bandwidth.  Moreover, the International Trade Commission previously adopted such a construction of the same claim term in a parallel investigation. During oral argument before the PTAB, one judge asked two questions of Intel related to the necessity of the agreed-upon construction but the panel failed to ask Qualcomm any questions about the bandwidth requirement. The next day the PTAB ordered additional briefing on the construction of a different claim term yet gave no hint of considering an alternate construction concerning increased bandwidth. The PTAB then issued final written decisions holding the challenged claims obvious.  In doing so, the PTAB adopted a construction of the claims that omitted any requirement that the claimed signal increase bandwidth.

The Federal Circuit vacated and remanded, holding that the PTAB failed to give Qualcomm adequate notice and opportunity to respond to the PTAB’s sua sponte elimination of an agreed-upon feature of the claims. Throughout the proceedings, Qualcomm argued that the prior art did not disclose the increased bandwidth requirement.  Given that this was an undisputed feature of the claims already adopted by a separate agency, the Federal Circuit observed that it was difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target.  Thus, it was unreasonable for the PTAB to eliminate the agreed-upon feature without providing notice and an opportunity for Qualcomm to be heard on the issue. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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