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Obviousness Determination Can Be Different for Apparatus and Method Claims
On Sept. 13, 2018, a Federal Circuit panel of Judges O'Malley, Reyna, and Taranto issued a per curium decision in ParkerVision, Inc. v. Qualcomm Inc. et al., No. 2017-2012 (Fed. Cir. 2018). The Federal Circuit affirmed the decision of the U.S. Patent Trial and Appeals Board (the Board) that the apparatus claims of U.S. Patent No. 6,091,940 (the '940 patent) were unpatentable as obvious under 35 U.S.C. §103. In addition, the Federal Circuit affirmed the Board's determination that the method claims of the '940 patent were not unpatentable.
ParkerVision, Inc. (ParkerVision) owns the '940 patent, titled “Method and System for Frequency Up-Conversion.” Id. at 2. The invention relates to “telecommunications devices, such as cellular phones, in which low-frequency electromagnetic signals are 'up-converted' to higher-frequency signals by various means.” Id. The invention sought to improve the efficiency of up-conversion by “modulating the amplitude of the baseband signal with the help of an 'oscillating signal.'” Id. at 3.
Both apparatus and method claims were at issue in the appeal. See, id. at 4. Qualcomm Inc. and Qualcomm Atheros, Inc. (collectively, Qualcomm) filed three petitions for inter partes review. See, id. The first two petitions cited three prior art references: Nozawa, Philips, and Maas (collectively, the Nozawa IPRs). The third petition also cited three prior art references: Ariie, Maas, and Krauss (the Ariie IPR). See, id. at 5-6. In the Nozawa IPRs, the Board found the apparatus claims obvious over the cited prior art references. See, id. at 7. The Board found “it was undisputed that 'the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim.'” Id. (emphasis in original). However, with respect to the method claims, the Board found that Qualcomm “impermissibly had changed its theory of unpatentability.” Id. Although Qualcomm asserted “that Nozawa taught a plurality of harmonics,” the Board found that, in its petitions, Qualcomm “failed to provide any argument or evidence as to why a person of ordinary skill would have selected operating conditions that would cause Nozawa to generate a plurality of integer-multiple harmonics.” Id. In the Ariie IPR, the Board found the claims unpatentable as obvious over the cited prior art. Id. at 7-8.
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