Oral Argument of the Month: Qualcomm, Inc. v. Intel Corp.

The oral argument of the month stems from the case of QUALCOMM INC. v. Intel Corp., 6 F.4th 1256 (Fed. Cir. 2021). The oral argument is interesting for its discussion of two issues.

The first issue was whether a question asked by one judge of an IPR panel with respect to a purportedly undisputed claim construction limitation adequately put the parties on notice that that the limitation was in play for a different and sua sponte claim interpretation by the Board panel. Under the facts of this appeal, the Federal Circuit panel (Moore, Reyna, and Stoll) ruled that notice was not sufficient and that the parties were not given adequate opportunity to respond to the sua sponte claim construction ruling.

The second — and potentially more interesting issue — was whether use of a means plus function claim limitation that was supported by a circuit element in the specification further required that an algorithm for programming the circuit element be included as part of the structure of the MPF limitation. Namely, the claim used the term “means for determining a single power tracking signal . . ..” This claim limitation was supported in the specification by a “power tracking circuit.” Qualcomm contended that the algorithm (disclosed in the spec.) for programming the power tracking circuit must also be included as part of the structure in support of the MPF term. The Federal Circuit rejected that argument. Judge Moore was particularly vocal during the oral argument about the precedent that would set and the implications for thousands and thousands of patents in the electrical arts. You can listen to some of her comments here:

A similar sentiment is reflected in the court’s eventual opinion where the panel states:

Qualcomm asks us to extend the algorithm requirement to circuitry. See Oral Argument at 20:14-40 We decline to do so. The reasoning for the algorithm requirement of WMS Gaming does not apply to functions implemented through circuitry. Unlike a general-purpose computer or microprocessor, circuitry does not “perform very different tasks in very different ways.” Aristocrat, 521 F.3d at 1333. Nor does circuitry require special programming to perform particular functions. Cf. WMS Gaming, 184 F.3d at 1348. Circuitry therefore provides structure that necessarily limits the scope of a claim without the aid of special programming. Our holding is consistent with our prior precedent. See Nevro, 955 F.3d at 35, 42-43(“Nevro argues that the asserted patent specifications’ disclosure of a signal generator as the structure for this limitation should end the inquiry. We agree.”). Also, Qualcomm’s proposed extension would jeopardize a plethora of patents in the electrical arts that rely on circuitry as the corresponding structure for their means-plus-function claim limitations. Accordingly, we see no error with the Board’s construction of the power tracker limitation in claim 28.

QUALCOMM INC. v. Intel Corp., 6 F.4th 1256, 1267 (Fed. Cir. 2021)(emphasis added).

You can listen to the entire oral argument here:

An FPGA walks into a bar. His friend EEPROM asks him why he’s so late. “Oh, I took a circuitous route to get here.”

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