CAFC Says No Need for PTAB to Explicitly Construe Claim Terms

HTC Corp. v. Cellular Communs. Equip., LLC, (Fed. Cir. Dec. 18, 2017) (Before Dyk, Reyna, and Taranto, J.) (Opinion for the court, Reyna, J.)

Appellants HTC Corporation and ZTE (USA) Inc. (“HTC”) appeal a final written decision by the Patent Trial and Appeal Board (“PTAB”) in an inter partes review. The Board instituted inter partes review of challenged claims in patents owned by Appellee Cellular Communications Equipment, LLC’s (“CEE”). The PTAB concluded that HTC failed to show that any of the challenged claims were unpatentable.

The appeal involves one patent, which relates to radio communications systems wherein a mobile device is assigned a plurality of codes for transmitting messages.  The base station may command the mobile device to increase transmission power, in order to counter signal interference when sending a message.  To avoid operating at maximum transmission power, the patent’s claimed solution set a “transmit power difference” at the beginning of the message transmission.  HTC raised one primary argument on appeal, specifically, that the PTAB failed to construe the term “message” according to its the broadest reasonable interpretation, as applied to its anticipation analysis. The record indicated that the PTAB did not expressly construed the term “message,” nor did HTC seek a particular construction of “message” before the PTAB.

On appeal, HTC advanced inconsistent claim construction arguments at various points in its briefs and during oral argument.  Nonetheless, the Court understood HTC’s contention to be that the PTAB’s application of the term “message” improperly excluded embodiments of the patent-in-suit specifically relating to single frame messages.

The Court relied on the PTAB’s Final Written Decision findings to conclude that “messages” could include one or more frames.  This understanding was supported by expert declarations by both sides.  Analysis of the “understanding” of a claim term was proper because the PTAB’s “findings establishing the scope of the patentable subject matter may fall within the ambit of claim construction.”  See Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1355-56 (Fed. Cir. 2001).  Therefore, although the PTAB did not expressly construe “message,” it properly understood its scope, as claimed, to include single frames.  The PTAB did not err, and the Federal Circuit affirmed the PTAB decision.

There is no need for the PTAB to explicitly construe claim terms if the PTAB’s findings were sufficient to establish its understanding of the scope of the claimed subject matter.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Ralph December 28, 2017 11:43 am

    A bit conclusionary in my book. I guess you don’t have to show your work in math class anymore either.

  2. B December 29, 2017 1:26 pm

    Funny, section 706 of the APA and In re Sang-Su Lee are pretty specific about the need for specificity.