Federal Circuit backs PTAB decision following HTC appeal

The US Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision in a dispute between telecoms companies HTC and ZTE and a subsidiary of patent licensing firm Acacia.

Yesterday, December 18, the Federal Circuit handed a win to Acacia’s subsidiary Cellular Communications, finding that the PTAB’s decision was supported by substantial evidence.

HTC and ZTE, among others, had applied for an inter partes review (IPR) of US patent number 7,941,174, which is directed to methods and apparatuses for a radio communications system where a subscriber station (such as a mobile device) is assigned a plurality of codes for transmitting messages.

The board had instituted an IPR of claims 1, 6, 9, 14, 18 and 19 of the ‘174 patent on three grounds: (1) anticipation by Baker (US patent application publication number 2008/0151840); (2) obviousness over Reed (US patent number 7,689,239) in view of Baker; and (3) obviousness over Reed in view of Love (US patent number 7,321,780).

In January 2016, the PTAB issued a final written decision concluding that the petitioners had failed to show that any of the challenged claims were unpatentable.

HTC and ZTE appealed to the Federal Circuit, presenting three arguments.

First, they said the board had failed to construe the term “message” according to its broadest reasonable interpretation construction.

The PTAB did not expressly construe the term “message,” and the plaintiffs didn’t seek construction of the term.

“HTC advances inconsistent claim construction arguments,” said Circuit Judge Jimmie Reyna, on behalf of the court.

The Federal Circuit said it disagreed with HTC and ZTE that the board erred in its understanding of the scope of the term.

Second, the plaintiffs claimed that Baker anticipates the challenged claims, but the Federal Circuit disagreed.

“Substantial evidence supports the board’s finding that Baker does not inherently anticipate the challenged claims of the ‘174 patent,” noted Reyna.

Finally, the plaintiffs argued that the PTAB ignored that Reed contemplates “creating power headroom for the entire mobile device by teaching that one data stream can be deprioritised in order to increase the transmit power available for another data stream”.

However, the court found that HTC was incorrect, and that the board had directly addressed the sole passage in Reed’s specification that dealt with this.

The Federal Circuit affirmed the PTAB’s decision.

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