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A precedential decision by the US Court of Appeals for the Federal Circuit in favor of our client

Client Updates / Sep 04, 2023

In a precedential decision, the Court of Appeals for the Federal Circuit ruled in favor of our client Telit Cinterion and against Sisvel, finding that the USPTO’s Patent Trial and Appeal Board (PTAB) correctly rejected Sisvel’s original claims based on the prior art, and refused to enter its proposed amended claims in an inter partes review (IPR).  Specifically, the Court found that the PTAB correctly gave the term “connection request message” its plain and ordinary meaning, rather than limiting it to specific telecommunication standards, as Sisvel requested.  Moreover, the PTAB correctly refused to enter Sisvel’s proposed substitute claims as broadening the scope of the original claims.  While the proposed wording was more limited in some respects, it broadened the claim in at least one respect. In particular, the change of wording from setting a frequency value “based on” a transmitted frequency parameter to setting that value “using” the frequency parameter was broadening, despite the facially similar wording.

Accordingly, the Court – commending our US Litigation Partner, Guy Yonay, for providing a “helpful illustration” at oral argument – found the proposed claims were correctly held by the PTAB to be improper.

Click here For the full Court decision.