By Tiffany Hu
Law360 (September 14, 2020, 6:14 PM EDT) -- Apple, HTC and ZTE are asking the Federal Circuit to overturn the Patent Trial and Appeal Board's decision to uphold a mobile transmission patent owned by an Inventergy Global Inc. affiliate, saying the board's ruling went against its own earlier findings.
In an opening brief filed Friday, the tech companies urged the appeals court to reverse the PTAB's March ruling that upheld the validity of INVT SPE LLC's patent, which covers a way to measure reception quality and adjust the transmission rate on a wireless device based on the results.
The companies said that the PTAB correctly acknowledged that a previous international application known as Keskitalo taught adjusting a data rate and comparing transmission levels. But the board went wrong when it rejected the notion that Keskitalo's transmission rate would change after comparing the results, as described in the disputed claims, they argued.
"[T]he board erred when it concluded — inconsistent with the board's own findings and Keskitalo itself — that Keskitalo failed to disclose the claimed 'rate changing means,'" the brief states. "The board's conclusion lacks substantial evidence and should be reversed."
The trio further argued that the PTAB erred in ruling that an ordinarily skilled person could modify Keskitalo's predetermined thresholds for transmission power to incorporate the average power values taught in an earlier patent known as Lindell to render the other claims obvious.
Counsel for the parties did not immediately respond to requests for comment Monday.
In 2017, INVT SPE, an affiliate of patent licensing firm Inventergy, lodged separate lawsuits against Apple, Taiwan-based HTC and China-based ZTE, accusing them of infringing its patented technology. The cases were filed in New Jersey federal court.
After the companies petitioned for inter partes review of the patents, the U.S. International Trade Commission in October 2018 agreed to probe whether they were importing and selling LTE- and 3G-compliant mobile phones, tablets and smartwatches that infringe INVT's patents. The cases have been stayed pending the outcome of the ITC investigation, court documents show.
Earlier this year, the PTAB held a hearing over the patent at issue, where an attorney for the tech companies twice told the board that he found several of INVT SPE's arguments to be "a little bit rich." But the board in March upheld the patent's validity, prompting the present appeal.
The PTAB challenges have led to mixed results for both sides. More recently, the board in April invalidated claims in INVT SPE's patent after finding that Apple made a strong showing of obviousness compared to the affiliate's "weak showing" of evidence to defend its validity.
The patent-in-suit is U.S. Patent No. 6,611,676.
The companies are represented by Adam P. Seitz and Paul R. Hart of Erise IP PA, and Stephen S. Korniczky, Martin R. Bader and Ericka J. Schulz of Sheppard Mullin Richter & Hampton LLP.
INVT SPE is represented by Cyrus Morton of Robins Kaplan LLP.
The case is Apple Inc. et al. v. INVT SPE LLC, case number 20-1859, in the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Britain Eakin and Nadia Dreid. Editing by Adam LoBelia.
