The US Court of Appeals for the Federal Circuit affirmed in part and reversed in part cross-appeals of two inter partes review (IPR) decisions (IPR2014-00295 and IPR2014-00476) based on various arguments relating to claim construction and prior art disclosure, and, in doing so, added to the list of challenged claims that the Patent Trial and Appeal Board (PTAB) had determined were unpatentable. Wasica Finance GmbH v. Continental Automotive Systems Inc., et al., Case Nos. 15-2078; -2079; -2093; -2096 (Fed. Cir., Apr. 4, 2017) (Schall, J).
In the PTAB proceedings, some of the challenged claims were found to be unpatentable and others not. The patent owner appealed, and the petitioner cross-appealed.
The Federal Circuit affirmed the PTAB, finding that a subset of challenged claims were anticipated or obvious in light of the cited prior art in two IPR decisions. The Court also affirmed the PTAB’s decision that another subset of challenged claims were not anticipated or obvious in light of the cited prior art. Finally, the Court reversed the PTAB’s decision that another claim was not anticipated or obvious in light of the cited prior art, thus adding to the list of claims found to be invalid.
In the appeal, patent owner/appellant Wasica disputed the constructions of the terms “electrical pressure signal,” “pressure transmitting signal” and “emittance.” Petitioner/cross-appellant Continental disputed whether the prior art met the disclosed “constant frequency” limitation and the construction of the term “bit sequence.” Wasica asserted that if the terms “electrical pressure signal” and “pressure transmitting signal” were properly construed to require the inclusion of numerical values, the prior art did not anticipate or render obvious the claims. The Federal Circuit confirmed the PTAB constructions, finding that there was no presentation disclaimer and that the patent specification disclosed both symbols and numerical values.
Wasica also argued that if the term “emittance” was properly construed to be limited to wireless communications, the prior art did not anticipate or render obvious other challenged claims. The Federal Circuit again confirmed the PTAB constructions, finding that the patent specification disclosed both wired and wireless systems.
Continental and cross-appellant Schrader asserted that the prior art anticipated another challenged claim because it met the “constant frequency” claim limitation. The Federal Circuit disagreed, finding that the prior art reference was ambiguous about the disclosure of a “constant frequency,” and as such it did not anticipate the claim. In addition, the Court explained that Continental and Schrader could not shift their position on appeal to cure deficits that were not addressed in their petitions to the PTAB.
Finally, Continental and Schrader argued that the prior art did not anticipate or render obvious another challenge, if the term “bit sequence” was properly construed as a sequence of “one or more bits.” On this issue, the Federal Circuit agreed, finding that the specification disclosed an embodiment that contained only a single bit. Accordingly, the Court reversed the PTAB and found that additional claim to be invalid.