Federal Circuit Distinguishes Obviousness between Apparatus and Method Claims
On September 13, 2018, the Federal Circuit affirmed three final written decisions of the U.S. Patent Trial and Appeal Board that held unpatentable various claims of U.S. Patent No. 6,091,940, owned by ParkerVision. The '940 patent, entitled "Method and System for Frequency Up-Conversion," relates to the frequency conversion of low-frequency baseband signals to higher-frequency (e.g., radio frequency or RF) signals.
Qualcomm filed three petitions for inter partes review challenging the '940 patent. The PTAB's (and later the Federal Circuit's) analysis split along whether the claims were apparatus or method claims. Claim 21 was representative of the apparatus at issue:
21. An apparatus for frequency up-conversion, comprising:
a pulse shaping module to receive an oscillating signal and to output a shaped string of pulses that is a function of said oscillating signal;
a switch module to receive said shaped string of pulses and a bias signal, wherein said shaped string of pulses causes said switch module to gate said bias signal and thereby generate a periodic signal having a plurality of harmonics, said bias signal being a function of an information signal, said periodic signal having an amplitude that is a function of said bias signal; and
a filter coupled to said switch module to isolate one or more desired harmonics of said plurality of harmonics.
Claim 25 was representative of the method at issue:
25. A method of communicating, comprising the steps of:
(1) shaping an oscillating signal to create a string of pulses that is a function of said oscillating signal;
(2) gating a reference signal at a rate that is a function of said string of pulses to create a periodic signal having a plurality of harmonics, said reference signal being a function of an information signal, and at least one of said plurality of harmonics being a desired harmonic; and
(3) outputting said periodic signal, said periodic signal having an amplitude that is a function of said reference signal.
In two of the three petitions, Qualcomm asserted that the challenged apparatus and method claims would have been obvious in view of three references -- Nozawa, Philips, and Maas (the Nozawa IPRs). In the third petition, Qualcomm asserted that the apparatus claims would have been obvious in view of Maas and two additional references -- Krauss and Ariie (the Ariie IPR). The Board instituted review with regard to all three petitions.
ParkerVision filed patent owner responses. With regard to the Nozawa IPRs, the patent owner argued that the petitions failed to identify any teaching that expressly disclosed a periodic signal containing "integer multiples" of any frequency, as required by the claims' "harmonics" limitation. ParkerVision also argued that Qualcomm's own expert had described a periodic signal with only one integer-multiple harmonic, as opposed to the claimed "plurality" of such harmonics. Finally, the patent owner argued that the Ariie IPR failed to prove how Ariie's field effect transistor is a "switch" and did not describe how Ariie's oscillating signal "gates" that switch, as required by the claims.
Qualcomm filed reply briefs that argued, among other points, that basic math confirms that for many input frequencies, Nozawa's mixer will generate the required "integer multiple" harmonics. Furthermore, petitioner argued that persons of ordinary skill in the art would have recognized that Krauss' rectangular waveform would have caused Ariie's FET to act as a gate or switch.
On March 7, 2017, the Board issued three final decisions, each finding that the challenged apparatus claims would have been obvious. However, with regard to the Nozawa IPRs, the Board found that Qualcomm had impermissibly changed its theory of unpatentability as to the method claims. As such, the Board found that Qualcomm did not provide any evidence as to why a person of ordinary skill would have selected operating conditions that would cause Nozawa to generate a plurality of integer-multiple harmonics. However, the Board agreed with Qualcomm as to the Ariie IPR, stating that the rectangular wave of Krauss would drive the Ariie FET as a switch.
ParkerVision appealed, arguing that the Board erred in holding the apparatus claims unpatentable. Qualcomm also cross-appealed, arguing that the Board erred in upholding the patentability of the method claims.
On appeal, ParkerVision argued that the Board erred by basing its patentability decisions on theories and evidence that Qualcomm did not present in its petitions. Also, ParkerVision contended that the Board's unpatentability determination as to the apparatus claims was based on an untimely and erroneous construction of the underlying claim language.
The panel, which included Judges O'Malley, Reyna, and Taranto, was unmoved by ParkerVision's position, saying that it was undisputed that Nozawa's device would necessarily product a periodic signal containing integer multiples of the fundamental frequency under some, albeit not all, conditions. The Board recalled Hewlett Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990), stating, "[a]pparatus claims cover what a device is, not what a device does." Specifically, with regard to the apparatus claims, Judge O'Malley, writing for the Panel, stated:
A prior art reference may anticipate or render obvious an apparatus claim – depending on the claim language – if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.
The panel treated the method claims of the '940 patent in a wholly different manner, stating that Qualcomm failed to "present evidence and argument that a person of ordinary skill would have been motivated to operate Nozawa in a manner that satisfied the 'plurality of harmonics' limitation." Furthermore, Qualcomm did not advance any position whether Nozawa's device would actually output a periodic signal with a plurality of integer-multiple harmonics. Namely, the panel reiterated InTouch Techs. Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1346-1347 (Fed. Cir. 2014), that parties seeking to invalidate method patents must show that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so. Instead, the panel wrote, "Qualcomm's petitions and accompanying expert testimony solely concerned whether the fundamental frequency itself is included in the meaning of 'harmonics.'"
In other words, with respect to apparatus claims, the Federal Circuit stated that if a prior art reference discloses an apparatus that is reasonably capable of operating as claimed, that reference could anticipate or render obvious the claims at issue. Additionally, when considering method claims, a reference is properly asserted, under 35 U.S.C. §§ 102 & 103, when there is a clear motivation to combine the references and a demonstrated expectation of success by a skilled artisan.
ParkerVision, Inc. v. Qualcomm Inc. (Fed. Cir. 2018)
Panel: Circuit Judges O'Malley, Reyna, and Taranto
Opinion by Circuit Judge O'Malley
