Where Steps of a Method Claim are Connected with “And”, a Covered method must perform each step
Appeal from the Patent Trial and Appeal Board. Appeal from the Patent Trial and Appeal Board.
Summary: The Board erred by finding method-claim steps connected by “and” to be conditional and by never explaining its reasoning for relying on the testimony of an expert who failed to meet the Board’s definition of one of ordinary skill in the art.
Sierra Wireless and others petitioned for IPR challenging claims of Sisvel’s patent as anticipated and obvious. The claims were for a wireless communication technique with the following steps. 1
detecting an unreceived data block, 1
setting up a timer, 1[a] stopping it when the data block is received during the running timer and 1[b] sending a status report at the end of the timer. The Board determined that an electrical engineering degree was required to demonstrate ordinary skill in the relevant field. The Board then construed that the claims required either step 1[c] [d]or[c]step 1, because the timer could not be stopped both while running (step 10) as well as expire without being stopped (steps 1[d]). According to this construction, the Board determined that Sierra’s prior-art reference was a forerunner and rendered some claims obvious because it disclosed steps such as 1[c] and 1[d]. The Federal Circuit rejected the Board’s claim construction. The court held because the steps 1[a], 1[b], and 1[c] were connected by the word “and,” that the plain language required that a method must perform both limitations, 1
, and 1[c], where their preconditions are applicable, in order to be included within the claim. The court vacated and remanded the Board’s findings of anticipation and obviousness for these two reasons. The Federal Circuit also vacated the Board’s findings that the dependent claims had not been shown to be unpatentable, because the Board did not explain its reasoning for relying upon expert testimony from a person who did not meet Board’s definitions of ordinary skill in art.
