Set of different black vector wireless and wifi icons for remote access and communication via radio waves

In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims  of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not supporting seemingly strong arguments with expert witness testimony. Further, the decisions highlight the consequence of not explaining how facts implicate esoteric nuances in the patent laws.

The ‘524 Patent, owned by Wasica, issued with 21 claims, with claims 1, 6, and 9 relevant here. Claim 1, the sole independent claim, is directed to a device for monitoring air pressure in an air chamber of pneumatic tires fitted on vehicle wheels, that device including, in relevant part, (1) a pressure measuring device that measures air pressure in the air chamber of the wheel and outputs an electrical pressure signal representative of the air pressure in the vehicle wheel, and (2) a transmitter that receives the electrical pressure signal output from the pressure measuring device and sends out a pressure transmitting signal corresponding to said air pressure. Claim 6 specifies that the transmission of signals from the transmitter to a receiver is carried out with electromagnetic waves of constant frequency. Claim 9 requires the transmitter to send data to the receiver through at least a 4 bit sequence having four smaller bit sequences of information.

In related proceedings before the PTAB, Schrader-Bridgeport Int’l, Inc. and Continental challenged the patentability of the ‘524 Patent. In IPR2014-00476, initiated by Schrader, the PTAB concluded that claims 1-5, 10, 12-19, and 21 of the ‘524 Patent were unpatentable as anticipated by Oselin or obvious over Oselin in combination with various references. In IPR2014-00295, initiated by Continental, the PTAB concluded that claims 1-3, 5, 10-19, and 21 of the ‘524 Patent were unpatentable as anticipated by Oselin or obvious over Oselin, alone and in combination with various other references, but found that claims 6-9 and 20 were patentable. Wasica, Schrader, and Continental each appealed various aspects of these decisions.

The Federal Circuit first dismissed Wasica’s argument that the PTAB erred in finding claims 1-5, 10-19, and 21 unpatentable based upon Oselin. During the PTAB proceedings, Wasica argued that the pressure measuring device of claim 1 should be construed to require output of a numerical representation of tire pressure, such that claim 1 is patentable over Oselin, which discloses a binary alarm message. The PTAB disagreed, finding that nothing in the claims limited the output of the pressure measuring device to numeric values, which was supported by several embodiments of the ‘524 Patent that used binary pressure sensors like those taught by Oselin. Before the Federal Circuit, however, Wasica slightly switched gears, instead arguing that the terms “electrical pressure signal” and “pressure transmitting signal” require a numerical representation of the tire’s pressure. The Federal Circuit nonetheless agreed with the PTAB. The Federal Circuit stated that neither the claims nor the specification limited either term to numerical values, as claim 1 only requires that the “electrical pressure signal” be representative of the air pressure (which can be satisfied by non-numerical signals). In support, the court cited other language in claim 1, indicating that the pressure signals may be “numbers or symbols” (the latter encompassing non-numeric signals), and the specification, which disclosed an embodiment involving non-numeric pressure signals. Thus, the Federal Circuit concluded that substantial evidence supported the PTAB’s conclusion that claims 1-5, 10-19, and 21 were unpatentable based on Oselin.

The Federal Circuit then dismissed Schrader’s and Continental’s arguments that the PTAB erred in finding claim 6 patentable. During the PTAB proceedings, Wasica presented expert testimony that Oselin’s discussion of transmitting signals having a common working frequency did not anticipate the claimed transmission of signals via a constant frequency, because the disclosed “common” working frequency represented an average frequency for signals having fluctuating frequencies. Schrader and Continental did not provide expert testimony supporting their arguments to the contrary.

Schrader and Continental each appealed the PTAB’s decision, but on different grounds. Schrader argued that Oselin’s disclosure of transmitting signals at “a frequency” suggested that the frequency “must be constant,” while Continental argued, just as it had unsuccessfully before the PTAB, that Oselin’s further disclosure of “how it can work with ‘any modulating scheme” included the claimed constant frequency signals. Neither argument succeeded. The Federal Circuit found the PTAB did not err in relying on Wasica’s expert testimony regarding Oselin’s disclosure. According to the court, Oselin is ambiguous as to whether transmissions occur “at an unchanging, fixed frequency,” and “ambiguous references do not anticipate a claim.” Likewise, the Federal Circuit found the PTAB did not err in concluding Oselin’s broad recitation of “any modulation scheme” (a genus) does not disclose the specific constant-frequency modulation scheme recited in claim 6 (a species). There are instances where a broad genus may anticipate a later species, but here the court noted that Continental failed to explain why the facts implicate such an instance. Thus, the Federal Circuit also found no error in the PTAB’s conclusion on this point. Accordingly, the Federal Circuit concluded that substantial evidence supported the PTAB’s conclusion that claim 6 was patentable.

The Federal Circuit concluded by agreeing with Schrader and Continental that the PTAB erred in finding claim 9 patentable. In its final written decisions, the PTAB construed the term “bit sequence” from claim 9 to mean a sequence of “two or more bits,” as argued by Wasica, such that claim 9 was patentable over Oselin’s disclosure of a single pressure alarm bit. On appeal, Schrader and Continental each contended that “bit sequence” should be properly construed to mean a sequence of “one or more bits.”  The Federal Circuit agreed, noting that the PTAB’s construction was inconsistent not only with what claim 9 recites but also the specification’s description of an embodiment having a bit sequence containing only a single bit. First, the court stated that the “bit sequence” of claim 9 “must be broad enough to include single-bit sequences,” as none of the recited component bit sequences can be empty and the only way a 4-bit sequence can have 4 component bit sequences is if each includes a single bit. Second, the court stated that the PTAB’s construction would effectively rewrite “at least 4” to mean “at least 8,” thereby excluding signals having four, five, six, or seven bits. In turn, the Federal Circuit construed the term “bit sequence” to include single-bit sequences, rendering claim 9 unpatentable over Oselin.

The foregoing is simply a summary of a lengthy court decision addressing a complicated set of facts and arguments the PTAB initially addressed. And while the court affirmed portions of the PTAB’s decisions, while reversing others, participants in AIA trials may find some comfort in the high level of detail with which both panels of arbiters reviewed the parties’ arguments and facts to determine whether this patent is valid.