IP Law Daily, PATENT—Fed. Cir.: PTAB's invalidity findings for Qualcomm's power tracking patent affirmed, (Sep 23, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Qualcomm's patent claims found invalid due to obviousness; prior art provided sufficient motivation for the claimed invention.

The U.S. Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board's (PTAB) rulings in six inter partes review (IPR) proceedings filed by Intel Corporation concerning Qualcomm Incorporated’s U.S. Patent No. 9,608,675 (the ’675 patent). For Qualcomm's appeal against the invalidity of claims 1-15, 17-25, and 27-33, the court ruled that these claims were unpatentable as obvious over a prior art reference, concluding that a person skilled in the art would have been motivated to use the prior art in mobile devices. Additionally, the court dismissed Intel's cross-appeal as it was contingent on the PTAB's findings being reversed (Qualcomm Inc. v. Intel Corp., No. 22-1824 (Fed. Cir. Sept. 23, 2024)).

Background. The appellant, Qualcomm Incorporated, is a global leader in semiconductor and telecommunications technologies. The cross-appellant, Intel Corporation, is one of the world's largest technology companies specializing in computer and mobile device processors.

Qualcomm’s ’675 patent is titled “Power Tracker for Multiple Transmit Signals Sent Simultaneously.” It discloses techniques for generating a power-tracking supply voltage for circuits like power amplifiers, which are crucial in mobile communication devices.

Intel filed six IPR applications challenging the validity of Qualcomm’s ’675 patent, arguing that the claims were obvious based on European Patent Application Publication 2,442,440 A1 (Yu) and a research paper by Wenhua Chen (Chen). Four IPRs (the "Yu IPRs") focused on the Yu reference, which discloses a method for operating a control unit for power amplifiers used in mobile devices and base stations. The remaining two IPRs (the "Chen IPRs") relied on Chen's research, which introduced efficiency enhancements for dual-band power amplifiers.

The PTAB ruled in Intel’s favor in the Yu IPRs, finding the challenged claims unpatentable as obvious. However, it ruled in Qualcomm’s favor in the Chen IPRs, determining that Intel failed to show the claims were obvious. Qualcomm appealed the adverse decision, while Intel cross-appealed the PTAB’s ruling on the Chen IPRs.

Obviousness. In evaluating the obviousness of the claims, the appellate court affirmed the PTAB's findings on the Yu reference. According to the court, the PTAB's conclusion that a person of ordinary skill in the art would have been motivated to modify the embodiments in Yu's Figures 3 and 4 to apply to mobile devices was supported by substantial evidence. The court noted that Yu explicitly teaches that the disclosed power amplifier could be used in mobile devices and base stations. Qualcomm argued that such modifications were impractical, citing the more extensive bandwidth required for base stations, making the amplifier unsuitable for mobile devices. However, the court rejected this argument, agreeing with the PTAB's reliance on KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), which allows for obviousness when a known technique would improve similar devices in the same way.

The court also referenced Graham v. John Deere Co., 383 U.S. 1 (1966), in outlining the factors necessary to determine obviousness, including the scope of prior art, the differences between prior art and the claimed invention, and the level of skill in the pertinent field. The Federal Circuit found that the PTAB had adequately considered these factors and relied on substantial evidence from expert testimony, supporting the conclusion that a skilled artisan could modify Yu’s power amplifier for use in mobile devices.

PTAB’s findings. The Federal Circuit also found no error in the PTAB's interpretation of the term "plurality of carrier aggregated transmit signals." The PTAB found that Intel had shown, by a preponderance of the evidence, that the relevant claims were unpatentable over Yu. The court affirmed the PTAB's finding that a skilled artisan would have been motivated to implement Yu's system in a mobile device, given that Yu disclosed a method for increasing bandwidth in mobile terminals and base stations.

Chen reference. Based on the Chen reference, Intel's cross-appeal was contingent on the court reversing the PTAB's ruling on the Yu IPRs. The cross-appeal was dismissed without further analysis since the court affirmed the PTAB's findings on the Yu IPRs.

Other considerations. The court also addressed Qualcomm's argument that the PTAB had failed to explain how Yu would be modified for mobile devices adequately. Relying on Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017), the court stated that the required explanation level depends on the case context. In this instance, where Yu expressly teaches the use of its power amplifier system in mobile devices, the PTAB's explanation was sufficient.

Furthermore, Qualcomm’s assertion that Yu taught away from using its technology in mobile devices was dismissed. The court cited In re Keller, 642 F.2d 413 (CCPA 1981), to support the proposition that a finding of obviousness does not require a showing that the features of one embodiment can be fully incorporated into another. Qualcomm's critique that Yu's bandwidth and size requirements made it unsuitable for mobile devices was deemed insufficient to undermine the PTAB's conclusion.

Conclusion. Thus, awarding costs to Intel, the Federal Circuit affirmed the PTAB's findings of invalidity for Qualcomm's patent claims and dismissed Intel's cross-appeal.

The Case is No. 22-1824.

Judge: Stark, L.

Attorneys: Israel Sasha Mayergoyz (Jones Day) for Qualcomm Inc. Louis W. Tompros (Wilmer Cutler Pickering Hale and Dorr LLP) for Intel Corp.

Companies: Qualcomm Inc.; Intel Corp.

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