The U.S. Court of Appeals for the Federal Circuit affirmed aspects of the PTAB's decision concerning Telit Cinterion's validity challenge against 3G Licensing's patent. However, it also vacated and remanded aspects of the decision regarding two substitute claims, requiring the PTAB to ensure that claimed steps are performed sequentially and supported by the patent's written description. The case revolves around technology that enhances message transmission over wireless systems while ensuring legacy system interoperability, particularly focusing on the claimed 'configuration mode' essential for implementing the new message format.
The CAFC concluded that the claimed configuration mode must be operational before utilizing the new message format, impacting patent claims' validity.
The ruling emphasized the necessity for substitute claims to be sufficiently supported by the written description, especially when amendments are made during IPR.
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