December 18, 2017

Federal Circuit Affirms Board on Claim Construction, No Anticipation, and Nonobviousness

By Bryan K. Wheelock, Principal

In HTC Corp. v. Cellular Communications Equipment, LLC [2016-1880] (December 18, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s Final Written Decision, finding no error in the Board’s claim construction and that substantial evidence supported the Board’s determination that the challenged claims were not invalid.

The Inter Partes Review involved U.S. Patent No. 7,941,174, which is directed to methods and apparatuses for a radio communications system where a subscriber station, i.e., a mobile device, is assigned a plurality of codes for transmitting messages.

The Board did not expressly construe the term “message,” nor did HTC seek construction of the term.  However, the Federal Circuit found that Board findings establishing the scope of the patented subject matter may fall within the ambit of claim construction, reviewable on appeal.  However, the Federal Circuit found HTC arguments unpersuasive and inconsistent.

On the asserted anticipation grounds, the Federal Circuit found that substantial evidence supported the Board’s conclusion, and rejected arguments presented by HTC for the first time on appeal.  On the asserted obviousness grounds, the Federal Circuit agreed with the Board’s reading of the prior art, and found that HTC did not point to any evidence in the record that would undermine the Board’s findings on the scope and content of the prior art.