Addressing Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decisions finding some, but not all, challenged claims unpatentable, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s determination finding the apparatus claims unpatentable but sparing the method claims. ParkerVision, Inc. v. Qualcomm Inc., Case Nos. 2017-2012, -2013, -2014, -2074 (Fed. Cir. Sept. 13, 2018) (O’Malley, J).

Qualcomm filed three IPR petitions against a ParkerVision patent directed to devices and methods for up-converting low frequency signals. The first and second petitions targeted both apparatus and method claims and relied on a first set of prior art references. The third petition targeted other apparatus claims and relied on a second set of prior art. The PTAB instituted review for all three petitions. 

ParkerVision filed responses in the first two IPRs contending that the prior art failed to satisfy the “plurality of harmonics” claim language because that prior art only explicitly mentioned having a single harmonic. Qualcomm filed a reply that argued that multiple harmonics would necessarily occur with the prior art for certain frequencies. The PTAB concluded that the apparatus claims were rendered obvious because the prior art was capable of having the plurality of harmonics. But the PTAB held that the method claims were patentable over the same prior art, because Qualcomm did not show motivation to actually use the prior art to obtain the plurality of harmonics. The parties cross-appealed the split decision to the Federal Circuit.

On appeal, the Federal Circuit affirmed the PTAB’s decisions. The Court considered whether the claims were written to require an infringing configuration or instead merely recited capability to perform functions. The Court found that the claims recited capability based on preamble language reciting an apparatus “for” frequency up-conversion and a switch module “to receive” a string of pulses. In view of that decision, the Court concluded that the prior art rendered obvious the apparatus claims, because it was capable of achieving the recited plurality of harmonics.

Turning to the method claims, the Federal Circuit concluded that prior art that only sometimes uses a claimed method amounts only to a teaching of that method and must be supported by a reason why an ordinary artisan would adopt that teaching. The Court agreed with the PTAB that Qualcomm met that burden and affirmed the decision finding the method claims patentable.

ParkerVision also filed a response in the third IPR arguing that Qualcomm’s identification of a transistor in the primary reference was insufficient to satisfy the “gate” claim language. Qualcomm’s reply explained that the primary reference’s transistor constitutes a gate when driven by the square wave function disclosed in the secondary reference. The PTAB agreed. The Federal Circuit consolidated the appeal of that third IPR decision with the other appeals and rejected ParkerVision’s argument that the PTAB relied on untimely arguments from Qualcomm’s reply brief by noting that the PTAB ultimately relied on passages cited in Qualcomm’s petition.