Sisvel v. Sierra Wi-fi – Helpful Steerage for Prosecutors on Motivation to Mix and Means-Plus-Operate Claims

by Dennis Crouch

Right this moment’s submit introduces the brand new choice in Sisvel Worldwide S. A. v. Sierra Wi-fi, Inc., No. 22-1493 (Fed. Cir. Oct. 6, 2023).  Right here, I concentrate on two distinct points. The primary half has to do with motivation-to-combine, with the choice providing some good language for patent prosecutors making an attempt to beat weakly worded workplace actions.  The second half focuses on means-plus-function language and concludes with my rant in regards to the court docket’s unduly sophisticated layers of assessments.  The case additionally upholds a single-reference obviousness holding, however I didn’t write about that portion of the choice.

Justifying a Motivation to Mix

Within the IPR, the PTAB cancelled some claims of Sisvel’s U.S. Patent No. 6,529,561 primarily based upon a single-reference obviousness dedication (Chen; WO 99/26371), however sided with the patentee as to different claims. The Board significantly discovered no motivation to mix One of many key causes was due to a scarcity of motivation to mix Chen with different GSM references.

On enchantment, the Federal Circuit affirmed these findings.  US patent legislation has an extended historical past of debate with regard to mixture claims, with the Supreme Courtroom’s most up-to-date pronouncement in KSR reaffirming its previous pronouncement {that a} mixture of identified components is probably going apparent absent some justification for deciding in any other case.  KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

[I]f a method has been used to enhance one system, and an individual of atypical ability within the artwork would acknowledge that it might enhance related gadgets in the identical approach, utilizing the approach is clear until its precise software is past his or her ability. . . . The mix of acquainted components in response to identified strategies is more likely to be apparent when it does not more than yield predictable outcomes.

Id.  Referencing Sakraida v. Ag Professional, Inc., 425 U.S. 273 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969); and Nice Atlantic & Pacific Tea Co. v. Grocery store Tools Corp., 340 U.S. 147 (1950).

Regardless of this decrease bar, IPR petitioners nonetheless have the burden of no less than explaining why a talented artisan would have been be motivated to mix varied references to type the claimed invention.  That is so, even when that rationalization is just a displaying of how its case suits the mannequin set out in KSR.

Right here, nevertheless, the Board concluded that the IPR petitioner had failed that low burden.  Particularly, on this case the petitioner supplied “causes to mix [that] have been merely assertions that the references have been analogous artwork, which, with out extra, is an inadequate articulation for motivation to mix.”  Quite, as KSR suggests, the identified components should be mixed “in response to identified strategies” and yield solely “predictable outcomes.”  Though the petitioner might need recited these authorized conclusions in its petition, the Board discovered them too conclusory and missing in readability.  Quite, the Board indicated {that a} correct motivation to mix evaluation would clarify how the first reference is modified by the GSM reference.  As I discussed above, it is a pretty low normal underneath KSR, however the Board defined that the petition failed to clarify: “what reference is the first versus secondary reference, what components are lacking from the first reference, what components ought to be added from the secondary reference to succeed in the claimed invention, or why these explicit components could be apparent so as to add.”

On enchantment, the Federal Circuit affirmed the dearth of motivation to mix – holding that “we can not fault the Board for being at a loss in making an attempt to decipher Cross-Appellants kitchen-sink of unclear and complicated motivation-to-combine arguments.”

Sisvel’s ’561 patent, owned by Sisvel, pertains to bettering channel coding strategies in transmitting information for radio programs. Channel coding provides redundant information bits to a knowledge block earlier than transmission to permit a receiver to raised detect and proper errors attributable to noise or different interference. The invention significantly employs “hyperlink adaptation” and “incremental redundancy” to optimize channel coding. Hyperlink adaptation permits the transmitter to regulate the code price between information block transmissions by altering the variety of redundant bits. Incremental redundancy permits the receiver to mix authentic and retransmitted information blocks to enhance decoding.

The Federal Circuit’s affirmance on motivation to mix might be helpful for patent prosecutors going through obviousness rejections. Whereas the explanatory burden on an IPR petitioner is larger on the IPR petitioner than on a patent examiner, prosecutors could discover Sisvel useful in arguing an examiner supplied insufficient rationale for combining references. Patent candidates may cite Sisvel in contending an workplace motion improperly combines references with out significantly explaining: (1) the first and secondary references; (2) lacking components equipped by the secondary reference; (3) why a talented artisan would have seemed to the secondary reference to fill gaps within the major reference; (4) why including the secondary reference’s educating would yield predictable outcomes; and many others. Though Sisvel arose within the context of invalidity allegations by an IPR petitioner, the motivation to mix ideas apply equally throughout prosecution. By requiring examiner explanations meet KSR’s requirements, candidates could reach overcoming some obviousness rejections.

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The Noah Take a look at as One Layer of Means Plus Operate Evaluation

The case additionally consists of an attention-grabbing dialogue a few means-plus-function limitation present in a number of the claims, and the query of whether or not the declare is indefinite.  As , a claimed means plus perform limitation is interpreted as overlaying the corresponding constructions disclosed throughout the specification together with their equivalents.  35 U.S.C. 112(f).  However we’ve got a particular null case — if no such constructions are disclosed then the Federal Circuit has dominated that the related declare is robotically invalid as indefinite.  This will get a bit trickier for inter partes assessment proceedings for the reason that petitioner isn’t permitted to problem claims primarily based upon indefiniteness. In Intel Corp. v. Qualcomm Inc., 21 F.4th 801 (Fed. Cir. 2021), the Federal Circuit instructed the PTAB to take the next strategy to probably indefinite MPF claims:

  1. Impossibility: Decide that the declare is indefinite after which determine whether or not the indefiniteness prevents a previous artwork evaluation (the “impossibility” conclusion); or
  2. Chance: Clarify why it is ready to construe the declare and resolve the prior artwork points regardless of potential indefiniteness.

In both case, the PTAB must make some strikes towards figuring out whether or not the limitation consists of enough structural assist within the specification.

Right here, Declare 5 of the ’561 patent requires a “means for detecting a necessity for retransmission.”  The specification doesn’t specify a selected algorithm to perform this purpose, however does disclose protocols like “ARQ” and “hybrid ARQ.”  In conditions like this, the Federal Circuit has created an unduly sophisticated framework  to find out whether or not knowledgeable testimony can be utilized to fill gaps within the structural rationalization of algorithmic MPF claims. Noah Programs, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012). At the first step, the Noah framework particularly asks whether or not any algorithm is disclosed.  If no algorithm then no knowledgeable. In Noah step two, the place an algorithm is disclosed however arguably insufficient, its sufficiency is judged primarily based on a talented artisan’s perspective and knowledgeable testimony is permitted to assist the conclusions. Id.

Right here, the PTAB discovered that references to “ARQ” and “Hybrid ARQ” weren’t algorithms.  On enchantment the Federal Circuit discovered error in that conclusion. Particularly, the court docket held the PTAB erred by not evaluating the protocol names underneath the step two framework. The court docket defined that even “temporary disclosures” could warrant assessing knowledgeable views on their import to a talented artisan. As a result of the specification explicitly referenced protocols, it was not wholly devoid of construction. The court docket vacated and remanded for the PTAB to conduct a step two evaluation, together with evaluating knowledgeable testimony.

This holding supplies helpful steerage for assessing computer-implemented means-plus-function claims. The Federal Circuit appropriately averted inflexible formalism, recognizing algorithm disclosures needn’t element each step and by recognizing that  reference to commercially out there instruments can fulfill the structural requirement of 112(f).  Nonetheless, I might have simplified this strategy and easily held that the declare lined the disclosed protocols. After Sisvel, courts evaluating software program means-plus-function limitations should fastidiously stroll the road between Noah’s the first step and two.

Conclusions: The means-plus-function doctrine was initially designed to permit patent candidates to say a component by the features it performs quite than reciting construction, with the purpose of offering a easy and versatile claiming approach. Nonetheless, as evidenced by the sophisticated Noah framework sitting atop Williamson and Donaldson, Sisvel’s nuanced evaluation of whether or not disclosed protocols qualify as algorithms, means-plus-function claims have change into one of many extra advanced and controversial doctrines in patent legislation. The present morass of guidelines, exceptions, and knowledgeable testimony required to evaluate even primary computer-implemented means-plus-function claims suggests the doctrine has veered removed from its authentic goal. In my opinion, courts ought to search to simplify the foundations and refocus on whether or not the specification supplies enough info to permit a talented artisan to grasp the boundaries of the purposeful declare aspect.

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  • Sisvel Worldwide S.A.: Represented by Robert Gajarsa, Timothy Devlin, and Neil Benchell of Devlin Legislation Agency.
  • Sierra Wi-fi, Inc.: Represented by Kourtney Merrill of Perkins Coie LLP and Amanda Tessar.
  • Telit Cinterion: Represented by Man Yonay of Pearl Cohen and Kyle Auteri.
  • Opinion: Authored by Choose Chen and joined by Chief Choose Moore and Choose Clevenger.