Where Method Claim Steps Are Connected by and a Covered Method Must Perform Each Step

Written by:Joshua M. Martineau and Douglas B. Wentzel

SIERRA WIRELESS, ULC V. SISVEL S.P.A.

Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: The Board erred by finding method-claim steps connected by “and” to be conditional and by never explaining its reasoning for relying on the testimony of an expert who failed to meet the Board’s definition of one of ordinary skill in the art.

Sierra Wireless and others petitioned for IPR challenging claims of Sisvel’s patent as anticipated and obvious.  The claims recited a wireless communication method with the following steps: 1[a] detecting a missed data block; 1[b] starting a timer; 1[c] stopping the timer when the missed data block is received while the timer is running; and 1[d] transmitting a status report after the timer expires.  The Board defined the level of ordinary skill in the relevant art as requiring an electrical engineering degree.  The Board then construed the claims to require either step 1[c] or step 1[d] because the timer cannot both be stopped while running (step 1[c]) and also expire without having been stopped (step 1[d]).  Based on that construction, the Board found Sierra’s prior art reference anticipated and rendered obvious some claims because it disclosed steps 1[a], 1[b], and 1[c].  The Board also found certain dependent claims unpatentable based on the testimony of Sisvel’s expert witness, who lacked an electrical engineering degree.

The Federal Circuit rejected the Board’s claim construction.  The court held that because steps 1[c] and 1[d] are connected by “and,” the plain language “requires that a method, to come within the claim, must perform both limitations 1[c] and 1[d] where their preconditions apply.”  The court also held that no substantial evidence supported the Board’s finding that Sierra’s prior art reference disclosed step 1[c].  For these two reasons, the court vacated the Board’s anticipation and obviousness findings and remanded.  The Federal Circuit also vacated and remanded the Board’s finding that the dependent claims were not shown to be unpatentable because the Board never explained its reasoning for relying on expert testimony from a witness who did not meet the Board’s definition of the level of ordinary skill in the art.

Editor: Sean Murray