Fed Circuit dismisses cross-appeals in Qualcomm patent dispute
The US Court of Appeals for the Federal Circuit has upheld three decisions which resulted in the partial invalidation of a telecoms patent asserted against semiconductor manufacturer Qualcomm.
Circuit Judge Kathleen O’Malley delivered the precedential decision yesterday, September 13.
ParkerVision, a communication technologies company, accused Qualcomm of infringing its patent covering radio frequency technology (US number 6,091,940). The patent claims a priority date of 1998 and is used in telecoms products, such as mobile phones.
In response, Qualcomm argued that the asserted patent was invalid and filed petitions for three inter partes reviews (IPR).
Last year, in the three decisions, the Patent Trial and Appeal Board (PTAB) held that certain claims of the ‘940 patent—though not all of the claims challenged by Qualcomm—are unpatentable on the grounds of obviousness.
Both ParkerVision and Qualcomm appealed against the parts of the decisions that did not go their way.
Qualcomm argued that the PTAB was wrong to find that the semiconductor company had failed to prove the unpatentability of the other claims, while ParkerVision alleged that the board should not have invalidated the other aspects of its patent.
Yesterday, the Federal Circuit said it was “not persuaded by either argument”.
O’Malley found that board did not err in its determination of what would have been obvious in light of the prior art Qualcomm presented, as “substantial evidence” supported the decision that certain claims of the ‘940 patent are unpatentable.
In relation to Qualcomm’s argument, O’Malley said the board was correct to find some of Qualcomm’s petitions “deficient” as they failed to specify whether a person of ordinary skill in the art would have any reason to operate the prior art in the method claimed in the ‘940 patent.
The Federal Circuit dismissed the competing appeals and upheld the mixed rulings of the PTAB.
In a statement released yesterday, ParkerVision said it was pleased that the Federal Circuit had confirmed that Qualcomm failed to prove that the method claims of the ‘940 patent are unpatentable.
ParkerVision said that “hundreds of millions of units” sold by Qualcomm incorporate technology protected by the ‘940 patent and other patents. The technology company is seeking a trial to resolve the matter.
This is not the first time that these parties have faced each other.
In 2016, the US Supreme Court declined to hear a five-year patent dispute between ParkerVision and Qualcomm. Although the initial decision at the US District Court for the Middle District of Florida had gone in ParkerVision’s favour, the Federal Circuit later sided with Qualcomm.
Meanwhile, Qualcomm has been embroiled in a number of patent disputes this year.
Last week, the US Federal Trade Commission asked the US District Court for the Northern District of California, San Jose Division, to order Qualcomm to license its wireless standard-essential patents to competitors on fair, reasonable, and non-discriminatory (FRAND) terms. The dispute is due to go to trial in January 2019.
Earlier in the year, the European Commission fined Qualcomm €997 million ($1.4 billion) for violating EU competition law. It said that Qualcomm had “illegally shut out rivals from the market for long-term evolution baseband chipsets for over five years, thereby cementing its market dominance”.
Finally, Qualcomm is also involved in a patent brawl with Apple. Apple recently filed a series of IPRs in the US relating to Qualcomm’s patents, and the two companies have also been embroiled in a FRAND dispute at the English High Court.
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