ParkerVision, Inc. v. Vidal, No. 2022-1548 (Fed. Cir. (PTAB) Dec. 15, 2023). Opinion by Chen, joined by Prost and Wallach.

Intel filed an IPR petition challenging claims 1, 3, and 5 in a patent owned by ParkerVision relating to wireless local area networks that use frequency translation technology. ParkerVision disclaimed claims 1 and 5, and the Patent Trial and Appeal Board determined that claim 3 was unpatentable as obvious.

In the Board’s final written decision, the Board adopted Intel’s proposed construction of the term “storage element” in claim 3, granted Intel’s motion to exclude certain arguments first raised in ParkerVision’s sur-reply, and determined that the prior art taught the claimed “storage element.” ParkerVision appealed.

The Federal Circuit affirmed. First, the court held that ParkerVision’s patent incorporated a different patent, which had a “critical paragraph” where “ParkerVision acted as its own lexicographer to define the term ‘storage element.’” The Federal Circuit ruled that the Board’s claim construction “correctly tracks the lexicography provided in” that critical paragraph. Also, the ruling was not impacted by analyses proffered in related district court litigations, as those analyses “were unduly influenced by the energy transfer system embodiments” described in the incorporated patent.

The Federal Circuit next turned to ParkerVision’s argument that the Board erred by relying on arguments allegedly first raised in Intel’s reply and by striking certain arguments in ParkerVision’s sur-reply. ParkerVision had first raised a claim construction for “storage element” in its patent owner response. The Federal Circuit held that “Intel’s reply appropriately responded to ParkerVision’s new claim construction by explaining how [the prior art] discloses a ‘storage element’ even under that proposed construction.” Also, the court saw nothing wrong with Intel providing its own competing construction of the term. The Federal Circuit continued: “Importantly, in keeping with APA requirements, ParkerVision was given an opportunity in a sur-reply to respond to Intel’s proposed construction.”

Lastly, the Federal Circuit held that substantial evidence, including the teachings of the prior art and expert testimony, supported the factual findings underpinning the Board’s obviousness determination. Thus, the Federal Circuit affirmed the determination that claim 3 was unpatentable as obvious.

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