Federal Circuit Reminds the PTAB that the APA Process Still Matters
The Federal Circuit recently found that the Patent Trial and Appeal Board (“Board”) violates a patent owner’s procedural rights under the Administrative Procedure Act (“APA”) when construing a disputed claim term by omitting an uncontested requirement in its construction. In Qualcomm Inc., v. Intel Corp., the patent owner and petitioner disputed the claim term, “a plurality of carrier aggregated transmit signals,” but both parties agreed that the term should be construed to require signals that increased user bandwidth. Even though both parties agreed-upon this requirement, the Board’s construction of the term nonetheless omitted this uncontested requirement. The Federal Circuit vacated and remanded the Board’s decision because the Board did not provide the patent owner notice and opportunity to respond to its sua sponte claim construction.
When determining that the patent owner was denied notice, the Federal Circuit acknowledged that the Board inquired the petitioner about the agreed-upon portion of the construction during oral argument, questioning whether it was a necessary limitation. However, the Federal Circuit deemed that a single question during oral argument made to the petitioner was insufficient notice and emphasized that the PTAB did not ask the petitioner additional follow-up questions and did not ask the patent owner any questions regarding the uncontested requirement. Nor did the Board request supplemental briefing on the agreed-upon construction despite requesting and receiving supplemental briefing on a separate claim construction issue. The Federal Circuit also noted that the PTAB did not criticize the uncontested requirement or announce its own construction at the hearing.
Even if the Board had provided actual notice to the patent owner during oral argument through additional questions and answers, the Federal Circuit implied that it would still find a violation of the APA because the patent owner would not be able to adequately respond to such notice. The Federal Circuit emphasized that under the current circumstances the patent owner would not have been motivated to provide evidence on an uncontested issue to rebut the Board’s construction and was not asked to provide additional briefing on the topic.
During its discussion, the Federal Circuit reminded litigants that the Board is allowed to depart from either parties’ proposed constructions as long as that part of the construction is in dispute. In Qualcomm, the parties disputed specific parts of the opposing party’s proposed construction but agreed upon other parts, such as the increased bandwidth requirement.
This case demonstrates that when construing a disputed claim term, the PTAB may not diverge from the requirements agreed-upon by both parties. In other words, while the PTAB may choose not to adopt either parties’ proposed constructions, the PTAB’s departure is cabined to the disputed part of the construction. If the parties agree regarding portions of a construction, the PTAB will likely be forced to follow that part of the construction so to avoid running afoul of the APA. This provides both patent owners and petitioners assurance that they may safely decline from briefing and procuring evidence for uncontested requirements of disputed claim terms.