Navigating Declare Building 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 system’s connection level inside a mobile community. A number of defendants petitioned the Patent Trial and Enchantment Board (PTAB) for inter partes evaluation (IPR), arguing that the challenged claims had been invalid as anticipated and/or apparent primarily based on prior artwork references. The PTAB instituted IPR and finally issued ultimate written choices concluding that the claims had 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 development 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 Building

The claims at challenge notably concentrate on using a “connection rejection message” to confer sure data to a cellular system.  The time period is used all through each the patent specification and the claims.  Nonetheless, it isn’t expressly outlined. The important thing dispute was it ought 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 development so as to keep away from the prior artwork.

The Board and the Federal Circuit each utilized the Phillips normal. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)  Below Phillips, claims are construed in response to their plain and peculiar which means as understood by an individual of peculiar ability within the artwork, wanting on the intrinsic proof together with the claims, specification, and prosecution historical past. Though the specification supplies steering, 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, reminiscent of dictionary definitions are much less vital.

On attraction, the Federal Circuit agreed with the PTAB that the plain and peculiar which 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 had been all directed to UMTS or GSM networks.  However, the issue is that the specification additionally states that the invention is may work “in many various 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 entails sending a rejection message within the method outlined.  Thus, though the specification solely the 2 networks, the courtroom discovered that the claims and specification had been drafted broadly and didn’t restrict the invention solely to GSM/UMTS. The courtroom  finally declined to restrict the claims solely to the disclosed embodiments and as an alternative affirmed the broad development.

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 “primarily based at the least partly 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 “might 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 had been thought of collectively, the substitute claims had been narrower general. 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 “primarily based on” to “utilizing” broadened the claims by eradicating the requirement that the frequency parameter influence the worth.

Key Takeaways

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