Federal Circuit Holds that the PTAB’s Construction Eliminating an Undisputed Claim Requirement Violated the APA

In Qualcomm Inc. v. Intel Corp., Case No. 20-1589 (Fed. Cir. 2021), the Court of Appeals for the Federal Circuit vacated and remanded a decision by the Patent Trial and Appeals Board (PTAB).  The Federal Circuit concluded that the Board violated the Administrative Procedures Act (APA) by adopting its own claim construction in its final written decision which eliminated a claim requirement agreed-upon by the parties and adopted by the International Trade Commission in a parallel proceeding.  The Court found that Qualcomm was not given notice of or an adequate opportunity to respond to the Board’s construction.  As the Court explained, Qualcomm had no reason to anticipate that an agreed-upon requirement would be a “moving target” and consequently did not have a reason to argue the matter before the PTAB or develop an evidentiary record supporting it. 

Opinion can be found here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1589.OPINION.7-27-2021_1810321.pdf