United States Court of Appeals 

for the Federal Circuit ______________________ 

SISVEL INTERNATIONAL S.A.,

Appellant

v.

SIERRA WIRELESS, INC., TELIT CINTERION 

DEUTSCHLAND GMBH,

Appellees

______________________ 

2022-1387, 2022-1492

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

01070, IPR2020-01071.

______________________ 

Decided: September 1, 2023

______________________ 

ROBERT J. GAJARSA, Devlin Law Firm LLC, Wilmington, DE, argued for appellant. Also represented by 

TIMOTHY DEVLIN. 

 AMANDA TESSAR, Perkins Coie LLP, Denver, CO, for appellee Sierra Wireless, Inc. Also represented by DANIEL 

TYLER KEESE, Portland, OR. 

 GUY YONAY, Pearl Cohen Zedek Latzer Baratz LLP, 

New York, NY, argued for all appellees. Appellee Telit 

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2 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

Cinterion Deutschland GmbH also represented by KYLE 

AUTERI, I. 

 ______________________ 

Before PROST, REYNA, and STARK, Circuit Judges.

STARK, Circuit Judge. 

Sisvel International S.A. (“Sisvel”) appeals from the 

Patent Trial and Appeal Board’s (“Board”) decisions in 

IPR2020-01070 and IPR2020-01071.1 In those decisions, 

the Board concluded that claims 10, 11, 13, 17, and 24 of 

U.S. Patent No. 7,433,698 (the “’698 patent”) and claims 1, 

2, 4, and 13-18 of U.S. Patent No. 8,364,196 (the “’196 patent”) are unpatentable as anticipated and/or obvious in 

view of certain prior art.

On appeal, Sisvel challenges the Board’s construction 

of a single claim term, “connection rejection message.” 

Sisvel also faults the Board’s denial of its revised motion to 

amend the claims of the ’698 patent. We have jurisdiction 

pursuant to 28 U.S.C. § 1295(a)(4)(A). For the reasons provided below, we affirm.

1 Appellees Sierra Wireless, Inc. and Thales DIS AIS 

Deutschland GmbH (collectively, “Appellees”) filed the petitions seeking inter partes review. Dell, Inc. and Cradlepoint, Inc. did as well and were initially parties to this 

appeal. Subsequently, the Court granted Dell’s and Cradlepoint’s motions to withdraw. See Sisvel Int’l S.A. v. Sierra Wireless, Inc., No. 2022-1387 (Fed. Cir. 2022), ECF 

Nos. 21, 39. The Court also granted Thales DIS AIS 

Deutschland GmbH’s motion for leave to be substituted by

Telit Cinterion Deutschland GmbH. See id., ECF No. 61.

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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 3

I 

A 

The ’698 and ’196 patents claim methods and apparatuses that rely on the exchange of frequency information in 

connection with cell reselection between a mobile station 

(or user cell phone) and a central mobile switching center. 

See ’698 patent col. 8 l. 1-col. 10 l. 40; ’196 patent col. 8 l. 1-

col. 10 l. 10. The ’698 patent, entitled “Cell Reselection Signalling Method,” employs “a connection setup rejection 

message . . . to direct a mobile communication means to attempt a new connection with certain parameter values 

such as a certain carrier frequency.” ’698 patent Abstract. 

The connection rejection message is “used to direct a mobile 

communication means to attempt a new connection with 

certain parameter values such as a certain carrier frequency.” Id. col. 3 ll. 9-11.

Claim 10, reproduced below, is representative:

10. A channel reselection method in a mobile communication means of a cellular telecommunication 

system, the method comprising the steps of:

receiving a connection rejection message; 

observing at least one parameter of said connection 

rejection message; and

setting a value of at least one parameter for a new 

connection setup attempt based at least in part on 

information in at least one frequency parameter of 

said connection rejection message. 

Id. col. 8 ll. 34-43 (emphasis added). The other challenged 

claims of the ’698 patent depend from claim 10.

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4 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

B 

The ’196 patent, sharing the title “Cell Reselection Signalling Method,” is a continuation of the application that 

eventually gave rise to the ’698 patent. Claim 1, reproduced below, is representative:

1. An apparatus, where the apparatus is configured:

to receive a connection rejection message in a mobile cellular network, the connection rejection message comprising a value of at least one parameter;

to set a reception frequency for a connection setup 

procedure based on the value of the at least one parameter of the connection rejection message; and

to select, for the connection setup procedure, a 

channel transmitting on the reception frequency 

based on the at least one parameter of the connection rejection message. 

’196 patent col. 8 ll. 2-12 (emphasis added). All the challenged claims depend from claim 1.

II

We begin by considering Sisvel’s contention that the 

Board erred in construing “connection rejection message.”

“The Board’s claim constructions . . . are determinations of law reviewed de novo where based on intrinsic evidence, with any Board findings about facts extrinsic to the 

patent record reviewed for substantial-evidence support.” 

St. Jude Med., LLC v. Snyders Heart Valve LLC, 977 F.3d 

1232, 1238 (Fed. Cir. 2020) (citing Teva Pharms. USA, Inc. 

v. Sandoz, Inc., 574 U.S. 318, 325-27 (2015)). The Phillips

claim-construction standard – whereby “[t]he words of a 

claim are generally given their ordinary and customary 

meaning as understood by a person of ordinary skill in the 

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art when read in the context of the specification and prosecution history,” Thorner v. Sony Comput. Ent. Am. LLC, 

669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips v. 

AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)) 

– applies here. See, e.g., J.A. 11. A claim term’s plain and 

ordinary meaning will not apply “1) when a patentee sets 

out a definition and acts as his own lexicographer, or 2) 

when the patentee disavows the full scope of a claim term 

either in the specification or during prosecution.” Thorner, 

669 F.3d at 1365.

Reviewing the issue de novo, we agree with the Board 

that “connection rejection message” should be given its 

plain and ordinary meaning of “a message that rejects a 

connection.” Sisvel’s proposed construction – “a message 

from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station” – would improperly limit the claims to embodiments using a Global 

System for Mobile Communication (“GSM”) or Universal 

Mobile Telecommunications System (“UMTS”) network. 

“[A]lthough the specification often describes very specific 

embodiments of the invention, we have repeatedly warned 

against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323.

Here, the intrinsic evidence provides no persuasive basis to limit the claims to any particular cellular networks. 

To the contrary, the claim language itself is not so limited. 

See, e.g., ’698 patent col. 8 ll. 34-43 (claim preamble reciting 

“channel reselection method in a mobile communication 

means of a cellular telecommunication system”); ’196 patent col. 8 ll. 2-12 (claim limitation directed to “receiv[ing] 

a connection rejection message in a mobile cellular network”). The specification, while only expressly disclosing 

embodiments in a UMTS or GSM network, also broadly 

teaches: 

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6 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

[t]he invention is applicable in many different cellular telecommunication systems, such as the 

UMTS system or the GSM system. The invention 

is applicable in any such cellular telecommunication system, in which the cellular telecommunication network sends a rejection message as a 

response to a connection setup request from a mobile station, if the network is unable to provide the 

requested connection.

’698 patent col. 7 ll. 40-46 (emphasis added); see also ’196 

patent col. 7 ll. 41-47 (same). We agree with the Board, 

which wrote: 

[T]his language [of the specification] clearly is permissive, not mandatory. At most, this sentence 

[which the Court has reproduced above] explains 

that the cellular telecommunication system can be

a UMTS system or GSM system; not that the cellular telecommunication system must be a UMTS 

system or GSM system.

J.A. 13.

Sisvel counters that UMTS and GSM “are the only specific networks identified by [the] ’698 and ’196 patents that 

actually send connection rejection messages.” Appellant’s 

Reply Br. 3 (emphasis omitted).2 Sisvel provides no actual 

evidence for this proposition and cites only to its Patent 

Owner Response as support. J.A. 10884 (“Since the ’196 

patent does not disclose that the invention is applicable to 

2 Sisvel does not contend that the patentee was its 

own lexicographer or that there is a clear and unmistakable disclaimer of claim scope. See Appellant’s Reply Br. 8 

(“Patent Owner is not [providing], and has not, provided a 

construction for connection rejection message that relies on 

‘lexicography’ or ‘disclaimer’ theories.”).

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any networks other than the GSM and UMTS networks, 

and primarily discusses 3G networks, the invention is thus 

limited to these two networks.”). We have no basis to accept Sisvel’s contention that a person of ordinary skill in 

the art would read the broad claim language, accompanied 

by the broad specification statement we have quoted above, 

to be limited to GSM and UMTS networks. 

As we agree with the Board on the proper construction 

of “connection rejection message,” and Sisvel has not made 

any arguments relating to the patentability of the challenged claims that do not depend on its preferred claim construction,3 we affirm the Board’s conclusion that the 

challenged claims of the ’698 patent and ’196 patent are 

unpatentable.

III

We next consider Sisvel’s contention that the Board 

erred in IPR2020-01070 by denying its motion to amend 

the claims of the ’698 patent.

The requirements for a motion to amend are set out in, 

among other places, 35 U.S.C. § 316(d) and 37 C.F.R. 

§ 42.121. As relevant to this appeal, 35 U.S.C. § 316(d)(3) 

provides that when a patent owner seeks to amend its 

claims during an inter partes review, the amended claims 

“may not enlarge the scope of the claims of the patent.” 

Similarly, 37 C.F.R. § 42.121(a)(2)(ii) explains that “[a] motion to amend may be denied where . . . [t]he amendment 

seeks to enlarge the scope of the claims.” In the similar 

3 The Board concluded that all challenged claims 

were unpatentable as anticipated and/or obvious over a collection of prior-art references. J.A. 77; J.A. 129-30. Sisvel 

does not appeal the Board’s conclusion that the claims are 

unpatentable under the Board’s construction. See Appellant’s Br. 13-17; Appellant’s Reply Br. 2-8.

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8 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

contexts of claim reissuance4 and reexamination,5 which 

likewise disallow a patent owner from enlarging the scope 

of its claims, we have explained that a claim “is broader in 

scope than the original claim[] if it contains within its scope 

any conceivable apparatus or process which would not have 

infringed the original patent.” Hockerson-Halberstadt, Inc. 

v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999); see 

also id. at 1373-74 (“In determining whether a patentee 

broadened a reexamined claim under 35 U.S.C. § 305, this 

court uses the same test as for reissue claims . . . .”).

While it is a petitioner’s burden to show, by a preponderance of the evidence, that any proposed substitute 

claims are unpatentable, see 37 C.F.R. § 42.121(d)(2) (“A 

petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute 

claims are unpatentable.”), it is Sisvel’s burden, as the patent owner, to show that the proposed amendment complies with relevant regulatory and statutory requirements, 

see 37 C.F.R. § 42.121(d)(1) (“A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the 

[applicable] requirements . . . .”).

We review the Board’s decision to deny the motion to 

amend according to the standards set out in the Administrative Procedure Act, 5 U.S.C. § 706 (“APA”), meaning we 

4 See 35 U.S.C. § 251(d) (“No reissued patent shall be 

granted enlarging the scope of the claims of the original 

patent unless applied for within two years from the grant 

of the original patent.”). 

5 See 35 U.S.C. § 305 (“No proposed amended or new 

claim enlarging the scope of a claim of the patent will be 

permitted in a reexamination proceeding under this chapter.”).

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will set aside Board actions that are arbitrary, capricious, 

an abuse of discretion, or otherwise not in accordance with 

law, and factual findings that are unsupported by substantial evidence. See Veritas Techs. LLC v. Veeam Software 

Corp., 835 F.3d 1406, 1413 (Fed. Cir. 2016) (reviewing denial of contingent motion to amend under APA). Legal error constitutes an abuse of discretion. See Highmark Inc. 

v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563 n.2 

(2014). In the reexamination context, we have explained 

that “[w]hether claims have been enlarged is a matter of 

claim construction, a question of law subject to complete 

and independent review on appeal.” Quantum Corp. v. 

Rodime, PLC, 65 F.3d 1577, 1580 (Fed. Cir. 1995); see also 

ArcelorMittal Fr. v. AK Steel Corp., 786 F.3d 885, 888 (Fed. 

Cir. 2015) (“Whether amendments made during reissue enlarge the scope of the claim . . . is a matter of claim construction, which we review de novo, while giving deference 

to subsidiary factual determinations.”).

We apply these same standards here. If the Board legally erred in concluding that the proposed substitute 

claims were broader than Sisvel’s original claims, the 

Board would have abused its discretion in denying the motion to amend on that ground, and we would have to reverse (absent any alternative ground justifying the denial). 

Reviewing the scope of the claims de novo, we agree with 

the Board that the proposed substitute claims are broader 

than the original claims. Thus, the Board did not abuse its 

discretion (or err in any respect) and we will affirm its denial of Sisvel’s revised motion to amend. 

The parties both propose that we are reviewing for substantial evidence. Compare Appellant’s Reply Br. 15 (“Accordingly, substantial evidence does not support the 

Board’s determination that Patent Owner’s substitute 

claims failed to satisfy 35 U.S.C. § 316(d) and 37 C.F.R. 

§ 42.121.”) with Appellee’s Br. 28 (“It is not this Court’s job 

to reweigh the substantial evidence on appeal.”). We 

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10 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

disagree. Instead, as we have noted, we are applying the 

APA standard of review, which here requires us to determine if the Board abused its discretion by committing legal 

error in its construction of the scope of the amended claims 

as compared to the scope of the original claims.

During inter partes review of the ’698 patent, Sisvel 

submitted a revised motion to amend, proposing substitute 

claims contingent on the Board concluding (as it later did) 

that claims 10, 11, 13, 17, and 24 were unpatentable. J.A. 

67. Proposed substitute claim 36, representative of all of 

the proposed substitute claims, J.A. 69, is reproduced below, with additions shown underlined and deletions 

stricken out.

Original Claim 10 Substitute Claim 36

A channel reselection 

method in a mobile communication means of a cellular 

telecommunication system, 

the method comprising the 

steps of:

receiving a connection rejection message;

observing at least one parameter of said connection rejection message; 

and

setting a value of at least 

one parameter for a 

new connection setup 

attempt based at least 

in part on information

in at least one frequency parameter of 

A channel reselection 

method in a mobile communication means of a cellular 

telecommunication system

station of a telecommunications network implementing the RRC protocol, the 

method comprising the 

steps of:

receiving a connection rejection message containing a frequency 

parameter indicated by 

the telecommunications network implementing the RRC 

protocol; 

observing at least one pa

rameter of the 

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said connection rejection message.

’698 patent col. 8 ll. 34-43.

frequency parameter 

contained within said 

connection rejection 

message; and 

setting a value of at least 

one frequency parameter for a new connection setup attempt 

based at least in part 

on information in at 

least one frequency pa

rameter of, the connection setup attempt 

using the frequency parameter contained 

within said connection 

rejection message.

J.A. 831 (Sisvel’s Revised 

Motion to Amend).

The Board denied Sisvel’s motion, concluding that the 

amendments to original claim 10 would have impermissibly enlarged claim scope. J.A. 69-71. The Board focused 

on the last (“setting a value”) limitation, comparing the 

original claim’s requirement that the value be set “based at 

least in part on information in at least one frequency parameter” of the connection rejection message, while in the 

substitute claims the value may be set merely by “using the 

frequency parameter” contained within the connection rejection message. J.A. 71 (emphasis added). As the Board 

correctly reasoned, “[i]n proposed substitute claim 36, the 

value that is set need not be based, in whole or in part, on 

information in the connection rejection message and, thus, 

claim 36 is broader in this respect than claim 10.” J.A. 73.

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12 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

In the context of these claims, “using” is broader than 

“based on.” Whereas the original claim language required 

that the value in a new connection setup attempt be at 

least in some respect impacted by (i.e., “based” on) the frequency parameter, the substitute claim removes this requirement. The removal of a claim requirement can 

broaden the resulting amended claim, and that is what has 

occurred here. See Pannu v. Storz Instruments, Inc., 258 

F.3d 1366, 1371 (Fed. Cir. 2001) (“A reissue claim that does 

not include a limitation present in the original patent 

claims is broader in that respect.”) (internal quotation 

marks omitted). 

As a result of Sisvel’s proposed amendment, it is conceivable there could be embodiments that would come 

within the scope of substitute claim 36 but would not have 

infringed original claim 10. During oral argument, Appellees provided a helpful illustration of this point, explaining 

that if the mobile station “took this frequency parameter 

[from the connection rejection message] and . . . calculated 

frequency [for the new connection setup attempt] by multiplying and then dividing by the same frequency parameter, 

[the new connection setup attempt] used [the frequency parameter], but the end result will not be based on it.” Oral 

Arg. at 20:13-31 (emphasis added). In other words, the 

value, V, multiplied by X and then divided by X, is still 

equal to V – and in that instance the determination of V 

has “used” X but V is clearly not “based on” X. It follows 

that, in this context, “using” is broader than “based on.” 

Appellees describe another way in which the substitute 

claim is broader than the original.6 While original claim 

10 required that the value of at least one parameter be 

6 The Court reads the Board’s decision at J.A. 72-73 

as being based on this reasoning as well.

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based “at least in part on information in at least one frequency parameter,” in substitute claim 36 the value of at 

least one frequency parameter need only “us[e] the frequency parameter,” not necessarily use any information in 

the frequency parameter. In substitute claim 36, then, it 

could be that the mere existence of the frequency parameter is used, while in the original claim – more narrowly – 

at least some content (i.e., “information”) from the parameter had to be used. Embodiments that only use the existence of the frequency parameter would be within the scope 

of substitute claim 36 but not within the scope of original 

claim 10, confirming, again, that the former is impermissibly broader than the latter. See J.A. 71.

Sisvel offers multiple arguments for why the Board’s 

conclusion was incorrect, but none of them persuades us.

First, Sisvel points out that it submitted the substitute 

claims after receiving the Board’s preliminary guidance in 

response to its original motion to amend. To the extent 

Sisvel is suggesting the Board was thereby required to approve the substitute claims, this is incorrect. See Medytox, 

Inc. v. Galderma S.A., 71 F.4th 990, 999-1000 (Fed. Cir. 

2023) (recognizing that Board is not bound to its preliminary guidance and can change its views of merits on more 

fulsome record, and due to application of different standard 

of proof at final merits stage, without acting in arbitrary 

and capricious manner). Preliminary guidance is just that, 

preliminary, and the Board retains authority to reject proposed substitute claims even if it preliminarily indicates it 

is likely to grant such claims. See id. at 1000 (“[T]he Board 

has an obligation to assess the question anew after trial 

based on the totality of the record, particularly where the 

standard changes.”) (internal quotation marks omitted).

Next, Sisvel contends that when all of the limitations 

are considered as a whole, the scope of substitute claim 36 

is narrower than the scope of original claim 10. But if a 

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14 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 

substitute claim “is broader in any respect [it] is considered 

to be broader than the original claim[] even though it may 

be narrower in other respects.” Hockerson-Halberstadt, 

183 F.3d at 1374 (emphasis added); see also 37 C.F.R. 

§ 1.175(b) (“A claim is a broadened claim if the claim is 

broadened in any respect.”). Here, substitute claim 36 is 

broader than original claim 10 in at least two respects, as 

we have explained. Therefore, the amendment is improper 

even if, in other aspects, the substitute claim is narrower 

than the original claim.

Sisvel also argues that the Board erred in its obviousness analysis of substitute claims 36-40 because it focused 

on the preamble of substitute claim 36 and did not provide 

enough reasoning for its conclusion. Even if this were correct (an issue we need not decide), the amendment process 

does not permit a patentee to add claims that are broader 

in scope than the original claims, even if the substitute 

claims were nonobvious. See Oral Argument at 0:37-0:55 

(Sisvel conceding it would have to prevail on both issues).7

7 During oral argument, Sisvel asserted that the 

Board failed to consider its argument that the teachings of 

certain prior art references did not render substitute claim 

36 obvious, in view of the limitations Sisvel added to the 

new claim. See, e.g., Oral Arg. at 0:58-7:20. Counsel 

acknowledged, however, that it did not make this argument in its briefing to us. See id. at 8:40-9:20. Thus, the 

issue is forfeited. See SmithKline Beecham Corp. v. Apotex 

Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Even if it were 

not, and even if Sisvel were correct that its substitute 

claims were not obvious, there was still no abuse of discretion in the Board’s denial of the motion to amend, given 

that the proposed substitute claims were broader than the 

original claims.

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Finally, as the Board stated, “[e]ach of the proposed

substitute dependent claims is amended to depend from 

proposed substitute independent claim 36.” J.A. 70. Sisvel 

does not argue that the substitute claims that depend from 

claim 36 would not also be impermissibly broadened, 

should this Court agree with the Board that substitute 

claim 36 is broader than original claim 10. See Appellant’s 

Br. 18-27; Appellant’s Reply Br. 10-15. “When a dependent 

claim and the independent claim it incorporates are not 

separately argued, precedent guides that absent some effort at distinction, the claims rise or fall together.” 

Soverain Software LLC v. Newegg Inc., 728 F.3d 1332, 1335 

(Fed. Cir. 2013). Because substitute claim 36 is impermissibly broader than original claim 10, the dependent claims, 

which are not separately argued, are also impermissibly 

broadened.

We conclude, therefore, that the Board correctly determined that Sisvel failed to meet its burden to show that the 

scope of its substitute claims is not broader than the scope 

of its original claims. Specifically, we agree with the Board 

that substitute claim 36 is impermissibly broader than 

original claim 10. It follows that the Board did not abuse 

its discretion in denying Sisvel’s contingent revised motion 

to amend as to substitute claims 36-40.

IV

We have considered Sisvel’s other arguments and find 

them unpersuasive. For the foregoing reasons, we affirm.

AFFIRMED

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