Federal Circuit Affirms the Board’s Claims Construction and Denial of Revised Motion to Amend: Sisvel Int’l v. Sierra Wireless, Inc.
In Sisvel Int’l v. Sierra Wireless, Inc., No. 2022-1387 (Fed. Cir. Sep. 1, 2023), the Federal Circuit affirmed
the Patent Trial and Appeal Board’s decision that claims 10, 11, 13, 17, and 24 of U.S. 7,433,698 (“the
‘698 patent”) and claims 1, 2, 4, and 13-18 of U.S. 8,364,196 (“the ‘196 patent”) were unpatentable as
anticipated and/or obvious over certain prior art. On appeal, Sisvel challenged the Board’s construction
of a single claim term, “connection rejection message” and the Board’s denial of its revised motion to
amend the claims.
The ‘698 and the ‘196 patents relate to methods and apparatuses that rely on the exchange of
frequency information in connection with cell reselection between a mobile station (or user cell phone)
and a central mobile switching center. The ‘196 patent was a continuation of the ‘698 patent.
With regard to Sisvel’s contention that the Board erred in construing “connection rejection message,”
the Federal Circuit agreed with the Board that the plain and ordinary meaning of the term should be
used based on broad, permissive language used in the specification. Although specific types of networks
were discussed in the specification with regard to the “connection rejection message,” there was no
actual evidence cited or basis given that the combination of the broad language of the specification and
the broad language of the claims would make one of ordinary skill think only particular networks
applied.
Additionally, with regard to the Board’s denial of a revised motion to amend the claims, the Federal
Circuit determined that new proposed claims were broader than the original claims and that the Board
did not abuse its discretion when it denied Sisvel’s revised motion to amend. The use of “based on” in
the original claims was determined by the Board to be narrower than the use of “using” in the proposed
substitute claims. This was because there were conceivable embodiments that could be within the
scope of the substitute claims and not be within the scope of the original claims.
Lessons for Practice
The use of permissive language in the specification may allow for broader interpretation of a claim term
when the term is being evaluated by its plain and ordinary meaning. Additionally, if any conceivable
embodiments could be within the scope of substitute claims and not within the scope of the original
claims, the substitute claims are likely broader than the original claims.