Federal Circuit Affirms PTAB Win for Samsung Invalidating Signal Transmission Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday affirmed a Patent Trial and Appeal Board (PTAB) ruling for Samsung Electronics, finding the Board did not violate the Administrative Procedures Act (APA) and that substantial evidence supported its findings.

Samsung filed for inter partes review (IPR) of claims 1–5, 7–9, 14, and 20 of G+ Communications’ U.S. Patent No. 10,736,130, which is titled “Method and device for uplink control signal transmission, user terminal, and storage medium.” The PTAB ultimately found that U.S. Patent No. 10,615,925 (“Kwak”) anticipated all of the challenged claims, and G+ Communications appealed.

G+ first argued that the Board violated the APA by relying on an argument Samsung made for the first time during the oral hearing. Specifically, Samsung said during the hearing that “Figure 44 ‘may’ be a comb structure but is not necessarily one,” which G+ said “constituted a new argument and that Dell Inc. v. Acceleron, LLC requires vacatur here due to the Board’s reliance on that new argument in its final written decision.” In Dell, the court found that the patent owner “was given no prior notice” of an argument presented for the first time during oral hearing and vacated and remanded the Board’s finding on the relevant claim.

The CAFC found Dell inapplicable here, explaining that “[t]he notion that G+ had no notice of the ‘may’ language or the arguments surrounding it is one that we squarely reject.” G+ raised the comb structure issue to begin with, said the court, and Samsung’s argument had remained consistent over the course of the IPR. “Parties are not barred from elaborating on their arguments on issues previously raised,” explained the opinion, citing Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019).  Additionally, the Board’s reference to the “may” language in Kwak was “only three sentences in a roughly four-page discussion of the relevant figures and limitations” and therefore did prove there was no substantive analysis generally.

With respect to G+’s substantial evidence arguments, the CAFC rejected the suggestion that the Board’s reasoning regarding Figure 44 “was inconsistent with its finding other limitations of claim 1 to be disclosed in Kwak when Kwak described many of its features with ‘may’ language.” G+ said it should have been allowed to demand consistency in the interpretation of this language, but the court credited Samsung’s argument that  “a prior art reference anticipates a claim even if it does so only in some modes of operation.” (quoting ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1363 (Fed. Cir. 2018).

G+ also questioned whether substantial evidence supports the Board’s finding that Kwak discloses limitation 1d of the ’130 patent, but the CAFC accepted the Board’s reliance on Samsung’s expert’s testimony as substantial evidence of anticipation, and ultimately affirmed.