Background
Intel Corporation filed multiple inter partes review (IPR) petitions challenging patents owned by Qualcomm Incorporated covering 5G and LTE technology. During the IPR proceedings, the parties agreed on the proper construction of certain claim terms and argued their cases based on that agreed construction. However, in its final written decisions, the Patent Trial and Appeal Board adopted a different claim construction for those terms — one that neither party had proposed — without giving either party advance notice or an opportunity to argue whether the alternative construction was correct or how the evidence should be evaluated under it.
Qualcomm appealed the PTAB’s decisions, arguing that the Board’s surprise adoption of a new claim construction — sprung on the parties only in the final written decision — violated the Administrative Procedure Act (APA) and Qualcomm’s due process rights. Intel defended the construction as correct, arguing that the Board had the authority to independently construe claims regardless of the parties’ agreements.
The Court’s Holding
The Federal Circuit vacated the PTAB’s decisions and remanded. Writing for the court, Judge O’Malley held that when the PTAB construes a claim term differently from the parties’ agreed construction, it must give the parties notice and an opportunity to respond before issuing its final written decision. The APA requires agencies to allow affected parties to respond to new issues or interpretations before a final agency decision. A claim construction adopted for the first time in a final written decision — without prior notice — does not satisfy that requirement.
The court emphasized that patent owners, in particular, may need to present different evidence, arguments, or even amend their claims in response to an unexpected claim construction. Denying that opportunity violates the APA’s procedural requirements and the basic fairness principles underlying due process. The Federal Circuit held that the PTAB could adopt its own construction, but must give the parties a meaningful chance to respond before that construction becomes the basis for a final decision invalidating patents.
Key Takeaways
- The PTAB must give the parties notice and an opportunity to respond before adopting a claim construction that neither party proposed and that differs from constructions argued in the proceedings.
- PTAB decisions that surprise the parties with a novel claim construction only in the final written decision violate the APA’s procedural requirements and can be vacated on appeal.
- This decision reinforces that IPR proceedings must comply with APA notice-and-comment principles, not just the patent-specific rules of the AIA.
- Patent owners facing IPR should monitor whether the PTAB might be considering alternative claim constructions and proactively address the broadest reasonable interpretation in their arguments — and should appeal promptly if the PTAB surprises them with an unexpected construction in the final written decision.
Why It Matters
The Qualcomm v. Intel decision is part of an important line of Federal Circuit cases addressing the procedural fairness requirements that govern PTAB proceedings. The Board has broad authority to construe patent claims and evaluate evidence, but that authority is not unlimited: the APA imposes meaningful procedural constraints, including the requirement to give affected parties notice and an opportunity to respond before issuing dispositive rulings.
For practitioners, the case highlights that APA challenges can be effective tools when the PTAB departs from settled procedural norms. When the Board adopts constructions, applies arguments, or relies on evidence that parties had no reasonable opportunity to address, those procedural missteps can form the basis for vacatur on appeal. This is especially significant in high-stakes IPR proceedings involving large patent portfolios in technologies like wireless communications, semiconductors, and pharmaceuticals, where claim construction can determine the outcome of dozens or hundreds of related cases.