ParkerVision, Inc. v. Vidal, Appeal No. 2022-1548 (Fed. Cir. December 15, 2023)

In its only precedential patent decision last week, the Federal Circuit addressed both a claim construction issue and a procedural issue concerning inter partes review proceedings.  As to the claim construction issue, the Court offered an extensive analysis concerning when a patent owner has provided its own, binding definition of a patent term through lexicography in the patent.  As for the latter issue, the Court considered the permissibility of replies and sur-replies that address new claim constructions offered for the first time in a patent owner response brief.

The patent at issue is a well-litigated one concerning wireless local area networks (WLANs).  Among its claim terms is a “storage element.”  The patent included the following verbiage:

FIG. 82A illustrates an exemplary energy transfer system 8202 for down-converting an input EM signal 8204.  The energy transfer system 8202 includes a switching module 8206 and a storage module illustrated as a storage capacitance 8208.  The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively.  Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value.  Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. 

Intel filed an IPR that sought to have the patent found invalid over two prior art references.  In its petition, it did not seek a construction of “storage element.”  The Board instituted review.  In its patent owner response, ParkerVision offered a construction for the term “storage element” that used the language in the definition in the patent, but added that it had to be part of “an energy transfer system.”

In its reply, Intel argued that ParkerVision’s additional language was not a proper part of the definition.  ParkerVision sought a sur-reply, in which it also argued that the prior art Intel had relied on did not satisfy the “non-negligible” part of the definition of “storage element.”  In its final written decision, the Board agreed with Intel that “storage element” did not have to be part of “an energy transfer system.”  It also struck ParkerVision’s sur-reply arguments concerning whether the prior art satisfied the “non-negligible” aspect of the definition.  The Board ultimately found the disputed claim invalid over Intel’s asserted prior art.

The Federal Circuit affirmed.  First, as to the claim construction issue, the Court found that ParkerVision’s patent clearly satisfied the requirements of lexicography—when a patent owner defines a term in a patent.  The Court analyzed the relevant portion of the specification sentence by sentence, and rejected the idea that it was limited to a specific embodiment in the patent.  The Court considered the fact that two other courts had agreed with ParkerVision’s proposed construction, but found that those courts had erred, having been “unduly influenced” by other portions of the specification.  ParkerVision also argued that the final sentence in the relevant portion of the specification was “comparative, not definitional.”  The Court rejected that argument, and held that language can be both comparative and definitional, as here. 

In terms of the procedural argument, the Court proceeded with the analysis in two steps.  It first concluded that Intel’s reply brief was proper.  Intel simply responded to new arguments raised for the first time in the patent owner response.  It did so relying on the same prior art that it had relied on in the petition.  Second, the Court affirmed that the Board had not abused its discretion in rejecting the new arguments raised in ParkerVision’s sur-reply briefing.  Those arguments could have been raised in its patent owner response.  To the extent that ParkerVision needed to elaborate further based on new evidence submitted with Intel’s reply brief, ParkerVision should have requested a sur-reply to address the new evidence.  It did not.

The Court then considered the merits of the obviousness analysis, and held that the Board’s opinion was supported by substantial evidence.  Thus, the Board’s opinion was affirmed.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.