Federal Circuit Patent Update - September 28, 2018

Precedential Opinions

1. PARKERVISION, INC. v. QUALCOMM INCORPORATED [OPINION] (2017-2012, 2017-2013, 2017-2014, 2017-2074, 9/13/18) (O'Malley, Reyna, Taranto)
   
   O'Malley, J. Affirming Board decision in IPRs that apparatus claims had been proven to be unpatentable and that method claims had not. The prior art was capable of being operated in accordance with the claims but was also capable of operating in other ways. The Court found that sufficient to invalidate the apparatus, but not the method, claims. "The method claims present a different story, however. While [petitioner] was only required to identify a prior art reference that discloses an apparatus 'capable of' performing the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, [petitioner] needed to present evidence and argument that a person of ordinary skill would have been motivated to operate [the prior art] in a