Federal Circuit Reminds The PTAB That The APA Process Still Matters

The Federal Circuit recently found that the Patent Trial and Appeal Board ("Board") violates a patent owner's procedural rights under the Administrative Procedure Act ("APA") when construing a disputed claim term by omitting an uncontested requirement in its construction. In Qualcomm Inc., v. Intel Corp., the patent owner and petitioner disputed the claim term, "a plurality of carrier aggregated transmit signals," but both parties agreed that the term should be construed to require signals that increased user bandwidth. Even though both parties agreed-upon this requirement, the Board's construction of the term nonetheless omitted this uncontested requirement. The Federal Circuit vacated and remanded the Board's decision because the Board did not provide the patent owner notice and opportunity to respond to its sua sponte claim construction.