Intel Corp. v. Qualcomm Inc.

• Decision Date: 28 December 2021
• Docket Number: 2020-1664
• Citation: 21 F.4th 784
• Parties: INTEL CORPORATION, Appellant v. QUALCOMM INCORPORATED, Appellee
• Court: U.S. Court of Appeals — Federal Circuit

21 F.4th 784

INTEL CORPORATION, Appellant

v.QUALCOMM INCORPORATED, Appellee

2020-1664

United States Court of Appeals, Federal Circuit.

Decided: December 28, 2021

Gregory H. Lantier, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for appellant. Also represented by David Langdon Cavanaugh, Thomas Saunders; Benjamin S. Fernandez, Denver, CO; Jason Kipnis, Palo Alto, CA; Cristina Salcedo, Los Angeles, CA.

Jonathan S. Franklin, Norton Rose Fulbright US LLP, Washington, DC, argued for appellee. Also represented by Peter B. Siegal ; Stephanie Debrow, Eagle Howard Robinson, Austin, TX; Daniel Leventhal, Richard Stephen Zembek, Houston, TX.

Before Prost, Taranto, and Hughes, Circuit Judges.

Prost, Circuit Judge

Intel Corporation ("Intel") petitioned the Patent Trial and Appeal Board ("Board") for inter partes review ("IPR") of various claims of U.S. Patent No. 8,229,043 ("the '043 patent"), owned by Qualcomm Incorporated ("Qualcomm"). Intel proved unpatentable some (but not all) of these claims and some (but not all) of Qualcomm's proposed substitute claims. Now, Intel appeals the Board's determinations regarding the surviving claims. We affirm as to the originally challenged claims, but we vacate as to the substitute claims. We remand for further proceedings.

BACKGROUND

I

This appeal relates to radio frequency communication systems. On the sending end of such systems, a sending device converts a data signal (e.g., voice data) to a higher "carrier" frequency for transmission over the air. On the receiving end, a receiving device down-converts (or demodulates) that signal to its original "baseband" frequency. The receiver can also amplify the signal via an amplifier. A "low-noise amplifier" ("LNA"), for example, does so while minimizing noise, which distorts the signal. "Gain" quantifies the amplification a system provides, and the need for it varies with the incoming signal's strength.

Qualcomm's patent is about the receiving end. Entitled Stepped Gain Mixer, it discloses a "mixer" (i.e., the component that performs demodulation) in a "receiver front end" that provides "stepped gain control" (i.e., gain adjustment in a stepwise manner). '043 patent col. 1 ll. 6–8. It explains that receivers with "many fine gain steps," as opposed to "just a few large gain steps," can "achieve a consistently high and smooth signal-to-noise ratio over a large gain range"—which helps them keep pace with the "higher data rates" of newer systems on the sending end. Id. at col. 1 ll. 21–27, 54–57. Pursuing that benefit, therefore, the patent uses "multiple gain states." Id. at col. 2 ll. 9–12.

Take the example pictured below (Qualcomm's annotation of '043 patent Fig. 2). Antenna 16 receives radio frequency input signal 32, which is amplified by one of three LNAs 17–19 and then (annotated in red) proceeds to transistors 39 and 40 of stepped gain mixer 38. The mixer demodulates this carrier signal by processing it with local oscillator signal 36. The signal ultimately emerges as baseband signal 84. Notably, switches 41 and 42 can alter the gain. Closing switch 41 (forming a connection) and opening switch 42 (breaking a connection) increases gain, as the transistor outputs (green and blue) add to make a higher-amplitude baseband signal (yellow):

J.A. 3697. Things change if the switches' states are swapped. Then, green goes to ground while blue becomes the baseband:

J.A. 3698. Thus, toggling "two mixer gain modes for each of three amplifier gain modes" translates to "six gain states." Id. at col. 7 ll. 24–26.

II

Intel petitioned for IPR identifying itself and its customer Apple, Inc. ("Apple") as real parties-in-interest. Intel Corp. v. Qualcomm Inc. , No. IPR2018-01429, 2020 WL 573274, at *1 (P.T.A.B. Jan. 30, 2020) (" Final Written Decision "). It advanced three unpatentability grounds: that claims 1, 17, 19, and 21 were anticipated by Der¹ ; that claims 2, 3, and 7 were obvious in view of Der and Razavi² ; and that claims 1–3, 6, 7, 17–19, and 21 were obvious in view of Der and Valla.³ Id. at *3. Intel prevailed on claims 1–3 and 7 but not claims 6, 17–19, and 21. Id. at *30. Granting in part Qualcomm's motion to amend, the Board replaced claims 2, 3, and 7 with substitute claims 27, 28, and 31 after disagreeing that these claims were obvious in view of Der, Razavi, and Burgener.⁴ Id. at *28, *30.

After Intel appealed, Qualcomm moved to dismiss for lack of standing. We denied that motion and directed the parties to address standing in their briefs.⁵ We have jurisdiction over final Board decisions under 28 U.S.C. § 1295(a)(4)(A). As discussed below, Intel has standing to invoke that jurisdiction.

DISCUSSION

I

Before proceeding to the merits, we address the threshold question of our jurisdiction. We are limited to deciding "cases" and "controversies." U.S. CONST. art. III, § 2. This "fundamental limitation" is reflected in the Article III standing requirement. Summers v. Earth Island Inst. , 555 U.S. 488, 493, 129 S.Ct. 1142, 173 L.Ed.2d 1 (2009). Although "not necessarily a requirement to appear before an administrative agency," it "kicks in when a party seeks review in a federal court." Apple Inc. v. Qualcomm Inc. , 17 F.4th 1131, 1135–36 (Fed. Cir. 2021) (cleaned up). That party must demonstrate: (1) an "injury in fact" (2) "fairly traceable" to the defendant's challenged conduct and (3) "likely to be redressed by a favorable judicial decision." Spokeo, Inc. v. Robins , 578 U.S. 330, 338, 136 S.Ct. 1540, 194 L.Ed.2d 635 (2016).

Relevant here, an injury in fact must be "concrete and particularized and actual or imminent, not conjectural or hypothetical." Id. at 339, 136 S.Ct. 1540 (cleaned up). That's generally so when an IPR petitioner "has engaged in, is engaging in, or will likely engage in activity that would give rise to a possible infringement suit." Grit Energy Sols., LLC v. Oren Techs., LLC , 957 F.3d 1309, 1319 (Fed. Cir. 2020) (cleaned up). The appellant in Grit , for instance, engaged in acts that not only could have but "did give rise to an infringement suit"—a suit dismissed without prejudice, leaving the patentee "free to reassert those infringement claims." Id. at 1320. Intel's predicament here is similar. Although Qualcomm didn't sue Intel for infringement, Qualcomm has not disputed that it mapped the '043 patent claims to an Intel product (and only an Intel product) in a prior suit against Apple. See Appellant's Br. 46; J.A. 4713–65; J.A. 4794–96; Intel's Response to Qualcomm's Motion to Dismiss, ECF No. 40 at 5 (and cited exhibits)). Like in Grit , therefore, Intel's acts "did give rise to an infringement suit." 957 F.3d at 1320. In Intel's words, Qualcomm "already has engaged in litigation involving that technology and this patent." Reply Br. 29.

It is of no moment that the suit wasn't against Intel, as Intel "need not face a specific threat of infringement." Grit , 957 F.3d at 1319 (cleaned up). Nor does it matter that the suit settled in 2019. See J.A. 4594–95. True, such settlements can deprive parties of standing. E.g., Apple , 17 F.4th at 1134 ; Apple Inc. v. Qualcomm Inc. , 992 F.3d 1378, 1385 (Fed. Cir. 2021). But Intel isn't a party to this one. In contrast, Intel was informed that "Qualcomm is not offering a covenant not to sue." J.A. 4713. Although that refusal isn't on its own "sufficient to create an actual controversy," Prasco, LLC v. Medicis Pharm. Corp. , 537 F.3d 1329, 1341 (Fed. Cir. 2008), it reinforces the analogy to Grit , where the patentee declined to stipulate that it would not reassert its previous infringement allegations, 957 F.3d at 1320 n.3.

Moreover, Intel represents that it continues to sell the relevant products to Apple and at least one other customer, and that in doing so it must "address[ ] the '043 patent and the risk of an infringement suit by Qualcomm." J.A. 4794–96; see J.A. 4785.⁶ Because Intel's risks transcend mere conjecture or hypothesis, see Spokeo , 578 U.S. at 339, 136 S.Ct. 1540, we conclude that Intel has standing. See also Intel Corp. v. Qualcomm Inc. , No. 20-1828, 21 F.4th 801, 807–08 (Fed. Cir. Dec. 28, 2021).

II

On to the merits. We start with the parties' dispute over the proper construction of the phrase "radio frequency input signal" in '043 patent claims 17, 19, and 21. Before the Board, Intel said this phrase "should take its ordinary meaning of an input signal having a radio frequency." Final Written Decision , at *7. Qualcomm disagreed, arguing that a skilled artisan reading the patent would have understood the phrase to reference the radio frequency signal that is received before down-conversion: "a signal centered at a carrier frequency at which the signal was transmitted/received." Id. at *6.

The upshot is that Intel's proposal (and not Qualcomm's) covers a signal called the intermediate frequency ("IF") signal in the two-stage "super heterodyne" architecture of prior-art reference Der. Unlike the one-stage "homodyne" architecture disclosed in the '043 patent, receivers in super heterodyne architectures like Der demodulate a carrier signal in two stages: first to that IF signal, and then to baseband. Adopting Qualcomm's proposal, the Board determined that Der didn't anticipate claims 17, 19, and 21. Id. at *15.

"We review claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic evidence for clear error." SpeedTrack, Inc. v. Amazon.com, Inc. , 998 F.3d 1373, 1378 (Fed. Cir. 2021) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 331–32, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015) ). Applying the "broadest reasonable interpretation" standard,⁷ we affirm the Board's construction.

Claim terms are generally accorded their ordinary meaning—that is, their meaning to a skilled artisan at the time of the invention. Phillips v. AWH Corp. , 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). This approach "provides an objective baseline" for our inquiry. Id. at 1313. To that end, we consult the sources...