On August 29, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a nonprecedential ruling in Koninklijke Philips N.V. v. Quectel Wireless Solutions Co. Ltd., affirming most aspects of an obviousness ruling issued by the Patent Trial and Appeal Board (PTAB) that invalidated radio communications patent claims owned by Philips. The Federal Circuit did agree with Philips that the PTAB erred in concluding that an asserted prior art reference taught the application of an offset to an “initial transmission power,” remanding to the PTAB for a better evaluation of Philips’ arguments that the prior art doesn’t disclose this limitation. The opinion was authored by Judge Chen.
Philips’ Arguments on ‘Offset’ Not Presented in the Context of Claim Construction
Quectel filed a petition for inter partes review (IPR) proceedings at the PTAB to challenge claim 9 of Philips’ U.S. Patent No. 8195216, Radio Communication System. The ‘216 patent claims a radio communication system regulating the power of communications between base stations and mobile stations in a way that addresses technological issues that can arise when data transmissions are interrupted, which can cause data transmissions to be received by mobile stations in a corrupted state. Claim 9 of the ‘216 patent claims the use of a secondary station with an uplink and downlink control channel, a power control means, a means for setting an initial transmission power after an interruption, and a means for determining an offset for setting the initial transmission power from a weighted average of transmission power prior to the interruption.
Quectel’s IPR petition challenged the validity of claim 9 of the ‘216 patent for obviousness based on two prior art references: U.S. Patent No. 6337988 (“Agin”); and U.S. Patent No. 6512925 (“Chen”). Agin teaches a method for improving performances of a mobile radiocommunications system that may be subject to interruptions through the use of a power control algorithm. Chen discloses a method and apparatus for adjusting the transmission power of base stations in simultaneous communication with a mobile station to align the transmission power of the base stations. The PTAB’s final written decision found that Quectel demonstrated that claim 9 of the ‘216 patent was invalid over this prior art combination.
On appeal, Philips argued that the PTAB failed to construe the claim term “offset.” According to the patent owner, “offset” should mean “a one-time adjustment applied to initial transmission power following an interruption.” However, the Federal Circuit noted that this argument, articulated by Philips in its surreply, was not timely raised. Further, Philips’ argument on the meaning of “offset” was presented in the context of distinguishing Agin rather than an explicit claim construction argument. Therefore, the appellate court found no reason to disagree with the PTAB’s understanding that Philips was not seeking construction of that claim term.
CAFC Remands for PTAB’s Evaluation of Application of Offset to ‘Initial Transmission Power’
In arguing against the PTAB’s obviousness finding, Philips contended that Agin did not disclose the claimed “initial transmission power” and “offset” limitations of claim 9. The Federal Circuit, noting the support of expert testimony from Quectel and information from the ‘216 patent’s specification, found substantial evidence supporting the PTAB’s conclusion that the claimed offset of the ‘216 patent was not distinguishable from Agin’s power control step size.
Philips was more successful in arguing that Agin’s teachings demonstrate that the step size adjustment offset could not be applied to the “initial transmission power” as claimed by the ‘216 patent. As the Federal Circuit noted, Agin discloses that uplink signals from the mobile station to the base station are not power controlled when transmissions are interrupted, and Philips argued in both the patent owner response and surreply that a power command is required for the mobile station to increase or decrease transmission power. Because the PTAB did not address Philips’ argument squarely in its final written decision, the Federal Circuit remanded for the Board to re-evaluate whether Agin teaches this limitation.
The Federal Circuit was not persuaded by Philips’ arguments that the Board did not properly find a motivation to combine Agin and Chen. Agin’s discussion of “statistics” to determine the magnitude at which a step size should be modified suggested the use of Chen’s weighted average, a conclusion by the PTAB that the Federal Circuit found reasonable. Further, the Federal Circuit found no issue with Chen obtaining a weighted average of power levels across multiple base stations instead of a single base station, and determined that the PTAB considered multiple rationales for combining Agin and Chen, including the benefits of Chen’s techniques, predictability, and improved performance in transmission quality.
The court also dismissed Philips’ arguments on appeal that Agin and Chen didn’t disclose the claimed means for determining the weighted average from a predetermined period prior to the interruption. The CAFC said that Philips forfeited its argument that the combination would lead to the “absurd result” of continually calculating the magnitude of the adjustment for every transmission, as this contention was not presented to the Board. The Federal Circuit also found that the PTAB properly found that Chen discusses different techniques in making a power control decision than simply taking a weighted average of multiple base stations without regard to a specific time period.
