Fed Circuit sides with PTAB on Huawei patent ruling
The US Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) ruling that invalidated claims in a Huawei patent challenged by Samsung.
In a non-precedential decision handed down yesterday, June 4, the Federal Circuit rejected Chinese telecoms company Huawei’s argument that the board had misinterpreted claims in US patent number 8,483,166.
The ‘166 patent describes how a mobile communication device—which the patent calls “a User Equipment (UE)”— that is set up to operate on an “evolved” network, such as a 4G network, can gain access to a “legacy” network, like a 2G or 3G network.
In May 2017, Samsung petitioned for an inter partes review of claims 1–5 and 12–16 of the ‘166 patent, arguing that the claims were unpatentable for obviousness based on 3rd Generation Partnership Project’s (3GPP) technical specification, a discussion document, and a technical report.
3GPP is an umbrella term for a number of standards organisations which develop protocols for mobile telecoms.
Initially, the PTAB only instituted a review of claims 1–5 but, after the US Supreme Court’s decision in SAS Institute v Iancu ( which held that the PTAB must assess all challenged claims) the board added claims 12–16 to the proceedings.
In a final written decision, the board concluded that claims 1–5 were unpatentable in light of the prior art, but rejected Samsung’s challenge to claims 12-16.
Huawei appealed against the decision and, when Samsung withdrew from the appeal, the director of the US Patent and Trademark Office intervened to defend the board’s decision.
On appeal, Huawei challenged the PTAB’s construction of a limitation in claim 1 and the board’s determination that the prior art renders claims 1–5 unpatentable.
According to Huawei, the PTAB was wrong to determine that the prior art doesn’t teach away from the relied-on combination and erroneously relied on reasoning not supported by the references or included in Samsung’s petition.
In rejecting Huawei’s argument, the court concluded that the board didn’t err in determining that a relevant artisan would have found it obvious to incorporate the mobility management entity identity (which is responsible for creating temporary IDs for the UE) disclosed in 3GPP’s discussion document into the network resource identifier field taught by the technical specification.
“Upholding the board’s determination as to that combination suffices to affirm the board’s unpatentability determination as to claims 1–5, without reaching Huawei’s claim construction challenge,” said Circuit Judge Richard Taranto, on behalf of the court.
The Federal Circuit went on to review the board’s determination of obviousness.
It rejected Huawei’s contention that the PTAB had “impermissibly relied on modifications of the prior art that were not suggested in any of Samsung’s papers and not supported by the record”, finding that there was substantial support for the board’s conclusion.
Turning to claim construction, the Federal Circuit concluded that even under Huawei’s narrower claim construction, it would have been obvious to a relevant artisan to combine aspects of the prior art.
“Therefore, we need not decide the appropriate claim construction to affirm the deter- mination that claim 1 is unpatentable,” said Taranto.
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