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IPCom GmbH & Co. v. HTC Corp.

IPCom GmbH & Co. (IPCom) is the owner of U.S. Patent No. 6,879,830 (’830 patent), which describes and claims a method and system for handing over a mobile phone call from one base station to another base station. After IPCom sued HTC Corporation (HTC) for infringing the ’830 patent, HTC requested that the U.S. Patent and Trademark Office (PTO) conduct inter partes reexamination of claims 1, 5–26, and 28–37 of the ’830 patent, which the PTO granted. The reexamination went through two rounds of review by the Examiner and the Patent Trial and Appeal Board (Board). In the first round, the Examiner concluded that the claims were patentable, but HTC appealed to the Board, which issued a new ground of rejection for claims 1 and 5–30. In the second round, IPCom amended claims 1, 5–26, and 28–37,1 but the Board found that these amended claims were obvious under 35 U.S.C. § 103 in view of various combinations of McDonald,2 Anderson,3 GSM,4 and PACS.5

In its appeal, IPCom alleges that, even though it had amended the scope of claims 31–37 during its second round before the Examiner, the Board lacked jurisdiction to review the Examiner’s patentability determination of these amended claims in the Board decision now on appeal. IPCom also argues that the Board’s obviousness rejections were based on a flawed claim construction, because the Board never identified the structure in the patent specification that corresponds to the “arrangement for reactivating the link” means-plus-function claim limitation. IPCom also appeals the Board’s factual findings for several other claim limitations and the motivation to combine the prior art references in the manner claimed by the ’830 patent.

We conclude that, under the circumstances of this case, the Board properly had the authority to consider the patentability of claims 31–37 and thus reject IPCom’s procedural challenge to the Board’s rejection of these claims. But we agree with IPCom that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and we vacate and remand the obviousness rejections based on that limitation. We affirm the Board’s findings in all other respects.

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