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Federal Circuit Affirms PTAB Claim Construction Interpretation And Upholds Refusal To Allow Impermissibly Broad Substitute Claims
10/11/2023On September 1, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion upholding the Patent Trial and Appeal Board’s (“PTAB”) (i) construction of the claim term “connection rejection message” as having its plain and ordinary meaning; (ii) finding that the proposed substitute independent claim was impermissibly broader than the original claim; and (iii) finding that the proposed substitute claims that were dependent on the impermissible independent claim were also impermissibly broadened. Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, -- F.4th --, 2023 WL 5659063 (Fed. Cir. Sept. 1, 2023).
Sisvel International S.A. (“Sisvel”) owns two patents: U.S. Patent No. 7,433,698 (the “’698 Patent”) and U.S. Patent No. 8,364,196 (the “’196 Patent”)—which both claim methods and apparatuses relying on the exchange of frequency information in connection with cell reselection between a mobile station (or a cell phone) and a central mobile switching center. The ’196 Patent is a continuation of the application that eventually resulted in the ’698 Patent.
The ’698 Patent illustrates “a connection setup rejection message ... to direct a mobile communication means to attempt a new connection with certain parameter values such as a certain carrier frequency.” The connection rejection method directs “a mobile communication means to attempt a new connection with certain parameter values such as a certain carrier frequency.” Similarly, the ’196 Patent also illustrates a “connection rejection message.”
Following IPR decisions that ruled claims of both patents unpatentable as anticipated and/or obvious, Sisvel raised two issues on appeal. First, it challenged the PTAB’s claim construction of the term “connection rejection message.” Second, it contended that the PTAB erred in denying its motion to amend claims of the ’698 Patent.
Regarding claim construction, a term’s plain and ordinary meaning “as understood by a person of ordinary skill in the art” is typically used in the context of claim specifications and prosecution history unless a patentee “sets out a definition and acts as his own lexicographer,” or “disavows the full scope of a claim term either in the specification or during prosecution.”
The PTAB gave the term “connection rejection message” its plain and ordinary meaning of “a message that rejects a connection.” Under de novo review, the CAFC agreed with this interpretation. It stated that Sisvel’s proposed construction, “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station,” would improperly limit the claims to embodiments using a Global System for Mobile Communication (“GSM”) or a Universal Mobile Telecommunications System (“UMTS”) network.
The CAFC found no persuasive basis within the intrinsic evidence to support the notion the claims should be limited to any specific cellular network. The relevant specification reads: “[t]he invention is applicable in many different cellular telecommunication systems, such as the UMTS system or the GSM system. The invention is applicable in any such cellular telecommunication system…” Thus, the CAFC and PTAB both found that the language, at most, means that the cellular telecommunication system can be a GSM or UMTS system, not that it must be.
As a result of the claim construction analysis and Sisvel’s failure to bring forth any arguments otherwise contradicting the unpatentability of the challenged claims, the CAFC affirmed the conclusion reached by the PTAB that the challenged claims of the ’698 patent and ’196 patent are unpatentable.
Regarding Sisvel’s argument that the PTAB erred in denying its motion to amend the claims of the ’698 Patent, the CAFC upheld the denial, emphasizing that Sisvel failed to meet its burden—as the patent owner—to show that the scope of the substitute claims was not impermissibly broader than the scope of its original claims.
During the IPR of the ’698 Patent, the PTAB focused on the following claim 10 limitation: “setting a value of at least one parameter for a new connection setup attempt based at least in part on information in at least one frequency parameter of said connection rejection message.” Specifically, the PTAB compared the original claim’s requirement that the value be set “based at least in part on information in at least one frequency parameter” of the connection rejection message, with the substitute claim language—which claims that the value may be set simply by “using the frequency parameter” contained within the connection rejection message. Since the substitute claim does not require the value to be based on information in connection with the rejection message, the PTAB reasoned that it is broader than the original claim. The CAFC agreed and emphasized that “using” is broader than “based on.”
Sisvel made three chief arguments before the CAFC: (i) that Sisvel only submitted the substitute claims after receiving positive preliminary guidance from the PTAB following its motion to amend; (ii) the scope of the substitute claim is narrower than the original claim 10 when all limitations are considered as a whole; and (iii) the PTAB improperly focused on the preamble of the substitute claim and did not provide enough reasoning for its conclusion.
The CAFC found Sisvel’s first argument to be unpersuasive because the preliminary guidance was merely guidance. Regarding the second argument, the CAFC stated that, if a substitute claim is broader “in any respect,” it is deemed broader than the original claim, even if narrower in other respects. The CAFC ruled that Sisvel’s third argument is not an issue it needs to decide, and even if it were, the substitute claims would still be impermissible broader than the scope of the original claims.
Thus, the CAFC found the substitute claims to be impermissibly broad, as well as all the dependent claims.
