Navigating Declare Development and Broadening Amendments: Classes from Sisvel v. Sierra Wi-fi

by Dennis Crouch

In 2019, Sisvel started asserting its U.S. Patent Nos. 7,433,698 and eight,364,196 towards cellphone makers, wi-fi chip suppliers, and mobile community operators. These patents declare strategies and programs for exchanging frequency data between a cellular station and a cellular switching heart to facilitate switching a cellular machine’s connection level inside a mobile community. A number of defendants petitioned the Patent Trial and Enchantment Board (PTAB) for inter partes evaluate (IPR), arguing that the challenged claims have been invalid as anticipated and/or apparent based mostly on prior artwork references. The PTAB instituted IPR and finally issued closing written choices concluding that the claims have been unpatentable. See IPR2020-01070, Paper No. 31 (PTAB Nov. 8, 2021); IPR2020-01071, Paper No. 30 (PTAB Nov. 8, 2021).

On attraction to the Federal Circuit, Sisvel challenged the PTAB’s declare building of the time period “connection rejection message” and its denial of Sisvel’s revised movement to amend the ‘698 patent claims. The Federal Circuit, in an opinion authored by Choose Stark and joined by Judges Prost and Reyna, affirmed on each points. Sisvel International S.A. v. Sierra Wireless, Inc., No. 22-1387 (Fed. Cir. September 1, 2023).

Declare Development

The claims at situation significantly deal with the usage of a “connection rejection message” to confer sure data to a cellular machine.  The time period is used all through each the patent specification and the claims.  Nevertheless, it isn’t expressly outlined. The important thing dispute was it needs to be construed broadly to imply merely “a message that rejects a connection” or narrowly restricted to “a message from a GSM or UMTS telecommunications community rejecting a connection request from a cellular station.”  As is common for IPR proceedings, the patentee was asking for the slender building with a view to keep away from the prior artwork.

The Board and the Federal Circuit each utilized the Phillips customary. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)  Beneath Phillips, claims are construed in accordance with their plain and extraordinary that means as understood by an individual of extraordinary talent within the artwork, wanting on the intrinsic proof together with the claims, specification, and prosecution historical past. Though the specification supplies steerage, limitations discovered inside described embodiments shouldn’t be imported into the claims absent a transparent intent by the patentee to restrict declare scope.  Extrinsic proof, comparable to dictionary definitions are much less necessary.

On attraction, the Federal Circuit agreed with the PTAB that the plain and extraordinary that means of “connection rejection message” is “a message that rejects a connection.” It discovered no persuasive foundation within the intrinsic proof to limit the time period solely to GSM or UMTS networks. The patentee’s argument right here was that the embodiments discovered within the specification have been all directed to UMTS or GSM networks.  However, the issue is that the specification additionally states that the invention is might work “in many alternative mobile telecommunications programs” of which UMTS and GMS are two examples. The specification goes on to state that the system work work in any system that includes sending a rejection message within the method outlined.  Thus, though the specification solely the 2 networks, the court docket discovered that the claims and specification have been drafted broadly and didn’t restrict the invention solely to GSM/UMTS. The court docket  finally declined to restrict the claims solely to the disclosed embodiments and as an alternative affirmed the broad building.

Outcome — invalidity affirmed.

Movement to Amend

Sisvel additionally challenged the PTAB’s denial of its revised contingent movement to amend claims of the ‘698 patent. The PTAB discovered the proposed substitute claims impermissibly broadened the scope of the unique claims, particularly by altering “based mostly at the least partially on” to merely “utilizing” when referring to data from the connection rejection message.  The AIA explicitly prohibits broadening amendments in IPR proceedings. 35 U.S.C. § 316(d)(3) states that amended claims “could not enlarge the scope of the claims of the patent.” Equally, 37 C.F.R. § 42.121(a)(2)(ii) supplies {that a} movement to amend could also be denied if it seeks to enlarge the scope of the claims.

Sisvel contended that when all limitations have been thought-about collectively, the substitute claims have been narrower total. On attraction, the Federal Circuit defined {that a} declare is broadened whether it is broader the least bit–even when narrowed in another respects, whether it is broadened the least bit. Right here, the change from “based mostly on” to “utilizing” broadened the claims by eradicating the requirement that the frequency parameter influence the worth.

Key Takeaways

In hindsight, this can be a state of affairs the place the patentee might have drafted the claims in these patents in a means that might have at the least prevented the arguments raised right here.  Of explicit be aware, it typically is sensible to incorporate a dependent claims that slender elements of the declare to the identical stage supplied by the embodiments. Right here, the court docket additionally latched-onto throwaway language within the specification stating that the system might work on any community despite the fact that the remainder of the specification centered on GSM and UMTS networks.  Nonetheless, on the time the assertion probably made sense as an try to clarify why it was correct to permit declare scope that’s not restricted to these networks.