Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Intel Corp. v. Qualcomm Inc., No. 2020-1664 (Dec. 28, 2021), affirming in part and vacating in part a decision of the Patent Trial and Appeal Board in an inter partes review (IPR) of Qualcomm’s U.S. Patent No. 8,229,043.
Intel sought, and the Board instituted, an IPR of the ’043 patent, which covers radio frequency communications systems. In a final written decision, the Board found several claims unpatentable, but held that other claims, including some original claims and some of Qualcomm’s proposed substitute claims, were patentable and nonobvious in view of the asserted prior art. Intel appealed.
Before reaching the merits of the appeal, the Federal Circuit addressed whether Intel had Article III standing, which requires proof of an “injury in fact,” to seek review of the Board’s decision in federal court. The Court determined the standing requirement was met based on Qualcomm’s assertion of the ’043 patent against an Intel product in a prior suit against Apple, Intel’s customer. Because Intel continued to sell the relevant product, and the settlement agreement between Apple and Qualcomm did not contain a covenant not to sue, Intel was at risk of a future infringement suit by Qualcomm.
Turning to the merits, the Court affirmed the Board’s construction of the phrase “radio frequency input signal” and rejected Intel’s argument that this phrase should be given its “ordinary meaning.” The Court explained that the Board’s construction “reflects the usage of ‘radio frequency input signal’ in the intrinsic record” and thus “gives effect to the contextually appropriate meaning” of the term. The Court rejected Intel’s argument that the Board’s construction improperly limited the claim to a disclosed embodiment because this argument “takes for granted” that Intel’s interpretation of the ordinary meaning was correct. The Court next affirmed the Board’s determination of nonobviousness as to the original claims challenged on appeal, agreeing with the Board’s determination that a motivation to combine the prior art references was lacking. As to Qualcomm’s proposed substitute claims, however, the Court vacated the Board’s determination that there was no motivation to combine. Specifically, the Court explained it is not necessary to show that the proposed combination is “the best option, only that it be a suitable option.” The Court remanded for the Board to reconsider the prior art combination as to the substitute claims.