CAFC affirms most of PTAB ruling invalidating Philips Radio Communication System patent claims
“The CAFC said Philips forfeited its argument that the [prior art] combination would lead to the ‘absurd result’ of continually calculating the magnitude of the adjustment for every transmission.”
On August 29, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a nonprecedential ruling in Koninklijke Philips N.V. v. Quectel Wireless Solutions Co. Ltd. affirming most aspects of an obviousness ruling issued by the Patent Trial and Appeal Board (PTAB) that invalidated radio communications patent claims owned by Philips. The Federal Circuit did agree with Philips, however, that the PTAB erred by concluding that a asserted reference taught the application to an “initial transmit power.” They remanded the case to the PTAB to evaluate Philips’ arguments about the prior art not disclosing this limitation. The opinion was authored by Judge Chen.
Philips’ Arguments on ‘Offset’ Not Presented in the Context of Claim Construction
Quectel filed a petition for inter partes review (IPR) proceedings at the PTAB to challenge claim 9 of Philips’ U.S. Patent No. 8195216, Radio Communication System. The ‘216 Patent claims a radio communications system that regulates the power of communication between base stations, and mobile stations. This addresses technological issues that may arise when data transmissions have been interrupted. This can result in data transmissions being received by mobile station in a corrupted condition. Claim 9 of the ‘216 patent claims the use of a secondary station with an uplink and downlink control channel, a power control means, a means for setting an initial transmission power after an interruption, and a means for determining an offset for setting the initial transmission power from a weighted average of transmission power prior to the interruption.
Quectel’s IPR petition challenged the validity of claim 9 of the ‘216 patent for obviousness based on two prior art references: U.S. Patent No. The IPR petition filed by Quectel challenged the validity of claim 9 of the ‘216 patent for obviousness based on two prior art references: U.S. 6512925 (“Chen”). Agin teaches how to improve the performance of a mobile radiocommunications systems that are susceptible to interruptions by using a power control algorithms. Chen discloses a way to align the transmission powers of base stations that are in simultaneous communication with mobile stations. The PTAB’s final written decision found that Quectel demonstrated that claim 9 of the ‘216 patent was invalid over this prior art combination.
On appeal, Philips argued that the PTAB failed to construe the claim term “offset.” According to the patent owner, “offset” should mean “a one-time adjustment applied to initial transmission power following an interruption.” However, the Federal Circuit noted that this argument, articulated by Philips in its surreply, was not timely raised. Philips’ argument about the meaning of “offset,” was made in the context to distinguish Agin, and not as an explicit argument for claim construction. CAFC Remands for PTAB Evaluation of Application of Offset To ‘Initial Transmission Power’
In arguing to the PTAB against its obviousness finding, Philips argued that Agin had not disclosed the claimed “initial transmission power” and “offset’ limitations of claim 9. The Federal Circuit found that expert testimony from Quectel, as well as information from the 216 patent’s specifications, supported the PTAB in its conclusion that the offset claimed by the 216 patent could not be distinguished from Agin’s power control step sizes. The Federal Circuit noted that Agin disclosed that uplink signals between the mobile station and the base station do not have power control when transmissions are interrupted. Philips argued, both in the patent owner’s response and the surreply, that a power command was required for the mobile to increase or decrease the transmission power. Because the PTAB did not address Philips’ argument squarely in its final written decision, the Federal Circuit remanded for the Board to re-evaluate whether Agin teaches this limitation.
The Federal Circuit was not persuaded by Philips’ arguments that the Board did not properly find a motivation to combine Agin and Chen. The Federal Circuit agreed that Agin’s discussion on “statistics” in determining the magnitude of a step size modification suggested using Chen’s weighted-average. The Federal Circuit also found that Agin’s discussion of “statistics” to determine the magnitude at which a step size should be modified suggested the use of Chen’s weighted-average. This conclusion by the PTAB was one that the Federal Circuit found reasonable. The CAFC stated that Philips had forfeited their argument that the combination of Agin and Chen would lead to an “absurd” result of constantly calculating the magnitude for every transmission as this contention was never presented to the Board. The Federal Circuit found that the PTAB correctly found that Chen discussed different techniques for making a power-control decision than simply taking a weighed average of multiple base station without regard to a particular time period.
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual
