“[T]he CAFC reasoned that the claimed configuration mode must be in use before the new message format can be utilized.”
Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a brief ruling in Telit Cinterion Deutschland GmbH v. 3G Licensing S.A., largely affirming a final written decision by the Patent Trial and Appeal Board (PTAB) that nixed Telit’s validity challenge to substitute claims submitted during inter partes review (IPR) proceedings. However, the Federal Circuit vacated and remanded the PTAB’s final decision with respect to two substitute patent claims because the Board should have required that the claimed steps be performed in order following analysis of the patent’s written description.
At issue in the IPR proceedings was 3G Licensing’s U.S. Patent No. 7580388, Method and Apparatus for Providing Enhanced Messages on Common Control Channel in Wireless Communication System. Its claims are directed to technologies enabling the transmission of larger messages than previously possible through the universal mobile telecommunications system while maintaining interoperability with legacy systems. Although the PTAB invalidated each of the challenged claims originally in the ‘388 patent, the Board granted a revised motion to amend (RMTA) filed by 3G Licensing which added about 20 substitute claims that became substitute claims 66 to 85 of the ‘388 patent.
On appeal, Telit argued that the Board did not have substantial evidence supporting its finding that substitute claims 69 and 77 are supported by the written description of the ‘388 patent. Both of these substitute claims are directed to methods of previous independent claims having a predefined configuration mode utilizing a new message format:
“wherein the new message format adapts a message by omitting data;
wherein another message is transmitted using the adapted message format; and
wherein omitting data includes omitting START values transmitted in a message preceding another message.”
Given the independent claims incorporated by reference, which include limitations directed to first and second messages transmitted from mobile terminals, the resulting “claim cascade” required that a total of four messages be transmitted. In finding this claim language supported by the written description, the PTAB also found that it wasn’t necessary for the first message to be first in time as compared to the second message, and that the first two messages of the independent claims were not required to be transmitted prior to the two messages disclosed in steps claimed by substitute claims 69 and 77.
The Federal Circuit disagreed with the PTAB, holding that the language of the substitute claims requires that the messages of the independent claims be sent before the messages of the steps of the dependent substitute claims. Analyzing language surrounding the claimed “predefined configuration mode” of the substitute claims, the Federal Circuit reasoned that the claimed configuration mode must be in use before the new message format can be utilized. Further, the first message of the independent claims includes the predefined configuration mode such that the messages transmitted through that configuration mode could only be sent after the first message.
Under this analysis, the Federal Circuit vacated the PTAB’s determinations regarding substitute claims 69 and 77. The decision was remanded to the PTAB with directions to determine patentability in light of finding that the first and second messages must be sent prior to the messages using the new message format.
Image Source: Deposit Photos
Author: billperry
Image ID: 70164509
