Fed Circuit throws Apple a lifeline after PTAB rejection
The US Court of Appeals for the Federal Circuit has pushed back on a noise-reduction technology ruling from the Patent Trial and Appeal Board ( PTAB), in which Apple failed to invalidate parts of a patent.
The court found that the board misunderstood some of the issues and incorrectly disregarded some of Apple’s arguments during a patent dispute with noise reduction technology developer Andrea Electronics.
Two years ago, Andrea sued US technology giant Apple for infringing US Patent 6,363,345 (related to noise cancelling and audio signal processing). Apple asked for two inter partes review petitions (’626, noise level estimation process, and ’627, setting values periodically), with PTAB eventually cancelling all of the claims, except for points 6, 7, 8 and 9.
Apple appealed the board’s conclusion, arguing that if the “board properly [had] considered its reply brief arguments, that would not have been the outcome”, and arguing that the board “erred in its conclusion that, based on the prior art cited, claims 6-9 are not unpatentable as either anticipated or obvious”.
The Federal Circuit disagreed with the board’s decision and found that Apple had not introduced a “new theory of unpatentability” as had been claimed by Andrea.
Apple had argued in its reply brief that a 1993 paper (Martin) outlined an algorithm which anticipated claims 6-9 of Andrea’s patent.
The PTAB refused to consider this argument, on the grounds that it was raising new arguments at too late a stage in the proceedings, and therefore raising a “new theory of unpatentability”.
However, the Federal Circuit has now ordered the board to revisit the issue and consider Apple’s response to the claims. The Federal Circuit found that Apple’s Martin argument was consistent with the position it had taken throughout the proceedings, and merely provided new examples in support of an argument it had made earlier.
“It is unreasonable to hold petitioners to such a high standard that, if they choose to rely on one example of an algorithm, they must either discuss all potential permutations of the variables or risk waiving the opportunity to further discuss other relevant examples in their reply,” the Federal Circuit said.
“We vacate the board’s findings” in the inter partes review, said the Federal Circuit, and “remand for consideration of the arguments raised by Apple in its ’626 [noise level estimation process] inter partes reply brief. We affirm the board’s findings in the ’627 [setting values periodically] inter partes review”.
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