September 17, 2018

“Capable of” Construction (Rather than “Configured to” Construction) Dooms Apparatus, but Not Method Claims

By Bryan K. Wheelock, Principal

In Parkervision, Inc. v. Qualcomm Incorporated, [2017-2012, 2017-2013, 2017-2014, 2017-2074] (September 13, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s determination in related Inter Partes Review proceedings that certain apparatus claims of U.S. Patent No. 6,091,940, generally related to telecommunications devices, were unpatentable as obvious under 35 U.S.C. § 103(a), and that certain method claims were not unpatentable.

The Federal Circuit rejected the argument that the Board erred by basing its patentability decisions on theories and evidence regarding the phrase “plurality of harmonics” that Qualcomm did not present in its petitions. The case came down to whether the claim language required the production of the “plurality of harmonics,” or simply the capability of producing the “plurality of harmonics.” The Federal Circuit found the claim language merely required the capability of producing the plurality of harmonics, which was met by the prior art that was similarly capable.

The method claims presented a different story — while Qualcomm was only required to identify a prior art reference that discloses an apparatus “capable of” performing the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, Qualcomm needed to present evidence and argument that a person of ordinary skill would have been motivated to operate the prior art in a manner that satisfied the “plurality of harmonics” limitation, which Qualcomm failed to do.