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- Qualcomm gets second chance to defend mobile power supply patent
- PTAB construed patent term in way neither party proposed
- Board failed to give Qualcomm notice, chance to respond to construction
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(Reuters) - Qualcomm Inc convinced the U.S. Court of Appeals for the Federal Circuit to give it a second chance to save parts of its patent related to mobile phone power supplies on Tuesday.
A three-judge Federal Circuit panel vacated and remanded Intel Corp's inter partes review wins at the Patent Trial and Appeal Board, finding that the PTAB had construed parts of the patent in a way that neither party proposed without giving Qualcomm a chance to respond.
Intel, represented by Louis Tompros of Wilmer Cutler Pickering Hale and Dorr, declined to comment. Qualcomm and its attorney Sasha Mayergoyz of Jones Day didn't immediately respond to a request for comment.
Qualcomm's patent relates to a technique for generating voltage that increases bandwidth, reduces power consumption and improves power efficiency for mobile phones. Intel successfully challenged the validity of parts of the patents in six IPR proceedings.
Qualcomm had sued Apple in California federal court in 2017, alleging Apple's iPhone 7 infringed the patent at issue and other patents in a case the parties settled in 2019.
In the PTAB proceedings, Qualcomm and Intel both interpreted the patent to cover technology that processes signals that increase user bandwidth, as did the U.S. International Trade Commission in a parallel proceeding. The board didn't request a briefing on the increased-bandwidth requirement, and only one judge asked Intel a question about it during a hearing, Moore said.
But in the board's final decisions, it construed that part of the patent not to include the requirement, and found the challenged parts of the patent to be unpatentable because they were obvious based on prior art.
In Tuesday's opinion, Chief U.S. Circuit Judge Kimberly Moore, joined by U.S. Circuit Judges Jimmie Reyna and Kara Stoll, agreed with Qualcomm that it wasn't given sufficient notice or an opportunity to respond to the board's interpretation of the term.
Moore said the board can construe a term in a way that neither party proposed, but in this case, the board "diverged from the agreed-upon increased bandwidth requirement."
"While the Board did not change theories midstream or depart from a construction it previously adopted, it is still difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target," Moore said. "And, unlike with disputed terms, it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction," especially considering the ITC had already adopted the parties' construction in this case.
Qualcomm was prejudiced by the construction because removing the requirement "eliminated an element on which Intel bore the burden of proof" to show that the invention was obvious, Moore said.
Moore also found that the PTAB's single question to Intel during a hearing didn't provide Qualcomm sufficient notice that it might change the requirement.
The case is Qualcomm Inc v. Intel Corp, U.S. Court of Appeals for the Federal Circuit, No. 20-1589.
For Qualcomm: Sasha Mayergoyz of Jones Day
For Intel: Louis Tompros of Wilmer Cutler Pickering Hale and Dorr