NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

INTELLECTUAL VENTURES II LLC,

Appellant

v.

ERICSSON INC., TELEFONAKTIEBOLAGET LM 

ERICSSON, GOOGLE INC.,

Appellees

______________________ 

2016-1739, 2016-1740, 2016-1741

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2014-00915, IPR2014-00919, IPR2014-01031.

______________________ 

Decided: May 8, 2017

______________________ 

PETER J. MCANDREWS, McAndrews, Held & Malloy, 

Ltd., Chicago, IL, argued for appellant. Also represented 

by GREGORY SCHODDE, ANDREW B. KARP, STEVEN JOHN 

HAMPTON. 

J. ANDREW LOWES, Haynes & Boone, LLP, Richardson, 

TX, argued for appellees Ericsson Inc., Telefonaktiebolaget LM Ericsson. Also represented by CLINT S. WILKINS; 

DEBRA JANECE MCCOMAS, Dallas, TX.
2 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

DARYL JOSEFFER, King & Spalding LLP, Washington, 

DC, argued for appellee Google Inc. Also represented by 

JOHN C. ALEMANNI, Kilpatrick Townsend & Stockton LLP, 

Winston-Salem, NC; DAVID A. REED, Atlanta GA; STEVEN 

MOORE, San Francisco, CA.

______________________ 

Before REYNA, WALLACH, and CHEN, Circuit Judges.

REYNA, Circuit Judge. 

Following institution of inter partes reviews, the 

United States Patent Trial and Appeal Board found

certain claims of Intellectual Ventures’ patents anticipated by or obvious over the prior art. Intellectual Ventures 

appeals from those decisions, arguing that the Board 

denied it procedural due process and misconstrued two 

claim terms. We find no due process violation and find 

that the Board’s claim construction was correct. We 

affirm. 

BACKGROUND 

The Intellectual Ventures Patents

Intellectual Ventures II LLC’s (“Intellectual Ventures”) patents—U.S. Patent Nos. 7,848,353 (“’353 patent”) and 8,396,079 (“’079 patent”)1—disclose a method 

for selection of appropriate bandwidth in a multibandwidth communication system. Wireless communication requires one unit to transmit data and another unit, 

a base station, to receive it. To communicate properly, 

the two units must have synchronized frequencies. J.A. 

434 (col. 1 ll. 22–29); see also J.A. 419 (Figure 1), 423–424. 

 

1 The ’079 patent is a continuation of the ’353 patent, and they share similar specifications. See J.A. 417.
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 3

The patents teach a method to synchronize base stations 

and remote units on the appropriate frequency more 

efficiently than the prior art. J.A. 434 (col. 2 ll. 6–8), 426–

427.

The patents teach that the base station transmits a 

signal with two portions, the first of which has a lower 

“chip rate” than the second. J.A. 426, 2920. The signal’s 

bandwidth corresponds to the chip rate with which it is 

transmitted. Id. Thus, the lower the chip rate, the lower 

the bandwidth. Despite this correlation, the parties agree 

that chip rate is not synonymous with bandwidth. Rather, the receiver reconfigures itself by setting its filters 

to “bandwidths appropriate for the higher chip rate.” J.A. 

426 (col. 8 ll. 31–32).

Intellectual Ventures argues the Board misconstrued 

the term “an indication of an operating bandwidth,” which 

appears in claim 1 of the ’353 patent and claim 6 of the 

’079 patent. Those claims recite:

1. A method for operating bandwidth determination in a multi-bandwidth communication system, 

the method comprising:

at a remote unit:

receiving a signal having a first signal portion at a 

first, predetermined bandwidth, containing an indication of an operating bandwidth selected from 

a plurality of bandwidths used for a further signal 

portion;

recovering the indication from the first signal portion at the first, predetermined bandwidth; and 

recovering information in the further signal portion at the operating bandwidth indicated by the 

indication.

J.A. 437 (col. 8 ll. 17–28) (disputed term emphasized).
4 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

6. A method performed by a wireless network, the 

method comprising:

transmitting, by the wireless network, a signal 

having a first signal portion at a first predetermined bandwidth and containing an indication of 

an operating bandwidth selected from a plurality 

of bandwidths used for a further signal portion; 

and 

wherein the indication is recoverable from the 

first signal portion and information in the further 

signal portion is recoverable at the operating 

bandwidth indicated by the indication.

J.A. 427 (col. 9 ll. 13–23) (disputed term emphasized).

Intellectual Ventures also argues the Board misconstrued the term “reconfigurable filters.” The ’353 patent’s

specification describes how the receiver configures itself to 

receive communications at both the lower and higher 

bandwidths by using one or more filters. J.A. 436 (col. 6 

ll. 54–58). The specification also incorporates by reference the implementation of “different filters, or reconfiguration of the same filter(s).” Id. (col. 6 ll. 58–64). 

Several dependent claims state that the filters “are reconfigurable.” J.A. 437–438.

The Prior Art

The Board found the challenged claims obvious over 

three prior art references. Because Intellectual Ventures’ 

arguments on appeal do not depend on the scope or content of the prior art, we describe each reference only 

briefly here.

The McFarland reference, U.S. Patent No. 7,397,850, 

describes a multi-bandwidth wireless communication 

system using Orthogonal Frequency Division Multiplexing (“OFDM”). J.A. 1043. OFDM systems break wide 

bandwidth systems into smaller frequency sub-channels. 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 5

Trompower, U.S. Patent No. 5,950,124, describes an 

apparatus and process for improving the performance of

cellular communication using certain systems parameters, such as chip rate. See J.A. 1096. Like the Intellectual Ventures patents, the chip rate in Trompower 

corresponds to the bandwidth. J.A. 2528, ¶ 51.

Pierzga, U.S. Patent Pub. No. 2001/0055320, teaches 

an improvement to an OFDM system. J.A. 7688. It 

describes an “adjustable” OFDM system that can “alter its 

data rate and bandwidth” to “account for a change in the 

number of services, or bandwidth required for each service.” J.A. 7723, ¶ [0076].

Board Proceedings 

In 2014, the Board granted two IPR petitions from Ericsson Inc. and Telefonaktiebolaget LM Ericsson (together, “Ericsson”). The first petition challenged claims 6–10 

and 28–32 of the ’079 patent as obvious over McFarland 

and Trompower (IPR2014-00915). The second petition 

challenged claims 1–8 and 21–27 of the ’353 patent as 

obvious over Pierzga and McFarland (IPR2014-00919). 

The Board also granted Google Inc.’s IPR petition challenging claims 9–20 and 29–34 of the ’353 patent as 

obvious over McFarland and Trompower (IPR2014-

01031). 

In their briefing before the Board, the parties disputed the construction of “an indication of an operating 

bandwidth.” Intellectual Ventures contended that the 

term means “identification of a particular operating 

bandwidth.” J.A. 4219. Google argued the plain and 

ordinary meaning should control. J.A. 7358; see also J.A. 

7359 (“A POSITA would understand that the plain and 

ordinary meaning of ‘indication of an operating bandwidth’ encompasses determining the frequency range 

used to transmit the further signal portion based on the 

information provided by the indication.”). Ericsson argued that Intellectual Ventures’ definition was unduly 
6 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

narrow and that no construction was needed because the 

’079 patent does not explain how bandwidth is computed 

from chip rate. J.A. 761–762.

On August 25, 2015, the Board held a combined oral 

argument for Ericsson’s two petitions. It held a separate

oral argument for Google’s petition later that same day. 

In both arguments, the parties extensively discussed “an 

indication of an operating bandwidth.” See, e.g., J.A. 45–

46, 49, 66. The Board characterized the exchange as “a 

vigorous dispute over the proper construction.” J.A. 8. 

During the Google argument (held after the Ericsson 

argument), the Board asked whether it would be “sufficient for us to say that enough information is conveyed 

from the transmitter to the receiver so that the receiver 

can configure itself to receive that which is transmitted.” 

J.A. 7541–7542. Google’s counsel said yes. J.A. 7542. 

Intellectual Ventures’ counsel disputed the Board’s proposed construction but conceded that “there’s no special 

requirement for the form of an indication of operating 

bandwidth.” J.A. 7572. Intellectual Ventures’ counsel 

further claimed that the indication could be an “arbitrary” 

number because “[t]he question is whether or not an 

operating bandwidth is actually identified, how that is 

done is not the issue; whether it’s done is the issue.” Id.

In its Final Written Decision, the Board construed “an 

indication of an operating bandwidth” to mean “that the 

first signal portion contains sufficient information so that 

when it is received, the receiver is able to configure itself 

to receive the data portion of the signal (or ‘further signal 

portion’ or ‘transport channel’) at approximately the same 

frequency range or bandwidth at which it will be transmitted by the transmitter.” J.A. 21. In a footnote, the 

Board “express[ed] no opinion as to whether the receiver 

must be set to the exact same lower cut-off frequency and 

upper cut-off frequency as the transmitter.” Id. n.15. 

“The key consideration,” according to the Board, “is that 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 7

the receiver is able to receive the data that the transmitted transmits.” Id. 

The Board also stated that the ’353 patent discloses 

two alternative embodiments, one with a single reconfigurable filter and one with two reconfigurable filters. J.A. 

107–108. It found that “the claim language does not 

preclude the use of a single, common filter that can be 

used in the logic for recovering the first signal portion, as 

well as the logic for recovering the further signal portion.” 

J.A. 108. It thus determined that “McFarland discloses a 

reconfigurable filter within the meaning of claim 16.” Id.

Applying these constructions, the Board found that all 

challenged claims of Intellectual Ventures’ patents would 

have been obvious over various pairings of McFarland, 

Trompower, and Pierzga. J.A. 61, 132, 201.

Intellectual Ventures timely appeals, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION 

Intellectual Ventures argues on appeal that the 

Board erred by (1) adopting a surprise construction that 

denied Intellectual Ventures due process; (2) misconstruing “an indication of an operating bandwidth”; and 

(3) misconstruing “reconfigurable filters.” We address 

each argument below.

Due Process

Intellectual Ventures argues that the Board denied it 

procedural due process by construing “an indication of an 

operating bandwidth” to mean something no party argued

for or expected. Intellectual Ventures contends that 

neither Ericsson nor Google offered a construction of the 

term in their petitions for IPR and that the Board never 

“previewed” its construction until the Google oral argument. According to Intellectual Ventures, the Board’s 
8 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

construction is completely untethered from the claim 

language or any proposed construction.

Intellectual Ventures cites two of our recent decisions 

in support: In re Magnum Oil International, Ltd., 829 

F.3d 1364, 1381 (Fed. Cir. 2016) and SAS Institute, Inc. v. 

ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 

2016). In Magnum Oil, we reversed the Board’s decision 

when the Board “adopt[ed] arguments on behalf of petitioners that could have been, but were not, raised by the 

petitioner during an IPR.” 829 F.3d at 1381. Because the 

petitioner bears the burden of proving unpatentability, we 

held that “the Board must base its decision on arguments 

that were advanced by a party, and to which the opposing 

party was given a chance to respond.” Id. In SAS, we 

were concerned not that “the Board adopted a construction in its final written decision, as the Board is free to do, 

but that the Board ‘change[d] theories in midstream.’” 

825 F.3d at 1351 (quoting Belden Inc. v. Berk-Tek LLC, 

805 F.3d 1064, 1080 (Fed. Cir. 2015)). Intellectual Ventures argues that the Board acted contrary to our decisions in Magnum Oil and SAS by ignoring Intellectual 

Ventures’ proposed construction and adopting a construction in its Final Written Decision that no party previously 

advanced.

We disagree. Due process requires notice and an opportunity to be heard by an impartial decision-maker. 

Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. 

Cir. 2013). As formal administrative adjudications, IPRs 

are subject to the Administrative Procedure Act (“APA”). 

SAS, 825 F.3d at 1351. Under the APA, the Board must 

inform the parties of “the matters of fact and law asserted.” 5 U.S.C. § 554(b)(3). It also must give the parties an 

opportunity to submit facts and arguments for consideration. Id. § 554(c). Each party is entitled to present oral 

and documentary evidence in support of its case, as well 

as rebuttal evidence. Id. § 556(d). Pursuant to these 

provisions, the Board may not change theories midstream 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 9

without giving the parties reasonable notice of its change. 

Belden, 805 F.3d at 1080.

The record demonstrates that Intellectual Ventures 

had notice and an opportunity to be heard. The parties 

engaged in “a vigorous dispute over the proper construction” of “an indication of an operating bandwidth.” J.A. 8. 

Intellectual Ventures was on notice that construction of 

this claim term was central to the case, and both sides 

extensively litigated the issue. Intellectual Ventures and 

Google proposed constructions during briefing, while 

Ericsson argued that no construction was necessary. J.A. 

762, 4219, 7359. Upon reviewing Google’s and Ericsson’s 

arguments, Intellectual Ventures could have requested 

leave to file a sur-reply. Belden, 805 F.3d at 1081. It did 

not do so. At the Ericsson oral argument, the Board 

questioned counsel for both Intellectual Ventures and 

Ericsson about the construction of “an indication of an 

operating bandwidth.” See, e.g., Oral Arg. Tr. at 45–46, 

49, 66.2 At the Google oral argument later that day, the 

Board asked Intellectual Ventures and Google to respond 

to a proposed construction. J.A. 7541–7542, 7576. After 

the Board issued its Final Written Decision, Intellectual 

Ventures was entitled to seek rehearing. 37 C.F.R. 

§ 42.71(d)(2). It did not.

Given the continuous focus on “an indication of an operating bandwidth” before and during oral arguments and 

Intellectual Ventures’ opportunity to seek a sur-reply or 

 

2 Though not included in the Joint Appendix, this 

citation refers to the August 25, 2015 consolidated oral 

argument in IPR2014-00915 and IPR2014-00919. We 

may judicially notice matters of public record for purposes 

of appeal. See Biomedical Patent Mgmt. Corp. v. Cal. 

Dep’t of Health Servs., 505 F.3d 1328, 1331 n.1 (Fed. Cir. 

2007).
10 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

rehearing, we find no due process violation. In Magnum 

Oil, the Board supplied completely new arguments that 

the petitioner never raised. 829 F.3d at 1381. Not so 

here, where the Board questioned counsel extensively 

over the construction of “an indication of an operating 

bandwidth” after receiving briefs that contested both 

whether and how the Board needed to construe the term. 

The Board is not constrained by the parties’ proposed 

constructions and is free to adopt its own construction, as 

it did here. See SAS, 825 F.3d at 1351. 

To be clear, after the Board adopts a construction, it

may not change theories without giving the parties an 

opportunity to respond. Id. No such change occurred 

here. Intellectual Ventures, Ericsson, and Google each 

submitted arguments as to whether and how to construe 

“an indication of operating bandwidth.” The Board questioned counsel about it at oral argument, asked for reaction to a hypothetical construction, and issued its 

construction in its Final Written Decision. This is not the 

situation in SAS, where the Board construed a claim term

one way in its Institution Decision and, unexpectedly, a 

different way in its Final Written Decision. 825 F.3d at 

1351. Because Intellectual Ventures had notice and an 

opportunity to be heard, Abbott Labs., 710 F.3d at 1328, 

the Board did not violate Intellectual Ventures’ due 

process. We thus turn to the merits of Intellectual Ventures’ two claim construction arguments.

“An Indication of an Operating Bandwidth”

Claim construction relying on only intrinsic evidence, 

as here, is a legal determination we review de novo. Teva 

Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840−42, 

(2015). 

The Board construed “an indication of an operating 

bandwidth” to mean “that the first signal portion contains 

sufficient information so that when it is received, the 

receiver is able to configure itself to receive the data 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 11

portion of the signal (or ‘further signal portion’ or 

‘transport channel’) at approximately the same frequency 

range or bandwidth at which it will be transmitted by the 

transmitter.” J.A. 21. The Board “express[ed] no opinion 

as to whether the receiver must be set to the exact same 

lower cut-off frequency and upper cut-off frequency as the 

transmitter.” J.A. 21 n.15. It said, “The key consideration is that the receiver is able to receive the data that the 

transmitted transmits.” Id.

On appeal, Intellectual Ventures agrees with the 

Board that “bandwidth” means “a frequency range.” It

also agrees with the Board that “operating bandwidth” 

means “the frequency rage or bandwidth that is used for 

the transport channel.” Thus, the real dispute is over the 

term “indication.” The Board’s example of a bandwidth 

included specific lower and upper cut-off frequencies. J.A. 

17. Intellectual Ventures asserts that based on this

example, “an indication of an operating bandwidth” must 

identify particular frequency limits. Thus, according to 

Intellectual Ventures, the Board erred by not adopting its 

proposed claim construction: “an identification of a particular bandwidth.” J.A. 699–701. 

Intellectual Ventures also points to claim 12 of the 

’079 patent, which depends from claim 11. Claim 12 

recites that “the receiver configured to recover information in the further signal portion comprises a filter 

having a bandpass appropriate for the indicated operating 

bandwidth.” J.A. 427 (col. 9 ll. 44–51). According to 

Intellectual Ventures, “[a] selected bandpass range could 

only be ‘appropriate’ if the indicated operating bandwidth 

is identified with particularity.” Opening Br. 24. 

The Board construes claims according their broadest 

reasonable interpretation consistent with the specification. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 

2142 (2016). We discern no error in the Board’s broad but 

reasonable construction. At oral argument, Intellectual 
12 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

Ventures’ counsel conceded that “there’s no special requirement for the form of an indication,” which could be 

an “arbitrary” number. J.A. 7572. This concession is in

stark contrast with Intellectual Ventures’ position on 

appeal. Moreover, the Board recognized that the transmitted data must be “at approximately the same frequency or range or bandwidth” for the receiver to work. J.A. 

21. The ’079 patent specification does not require greater 

specificity; it requires only an “appropriate” bandpass. 

J.A. 426 (col. 8 l. 66). The Board’s construction comports 

with the specification by requiring the first signal portion 

to contain “sufficient information” to allow configuration. 

The lower and upper cut-off frequencies might not need to 

be “the exact same,” J.A. 21 n.15, but they do need to be 

“approximately the same” for the patents to work. The 

Board’s construction is reasonable in light of the specification. 

“Reconfigurable Filters”

Dependent claim 3 of the ’353 patent states, “the filter 

filtering the first signal portion and the filter filtering the 

further signal portion are reconfigurable.” J.A. 437 (col. 8 

ll. 37–39). Similarly, dependent claims 16 and 23 of the 

’353 patent state, “the filter having a bandpass appropriate for the first, predetermined bandwidth and the filter 

having a bandpass appropriate for the indicated operating 

bandwidth are reconfigurable.” J.A. 438 (col. 9 ll. 27–30; 

col. 10 ll. 7–10). The Board determined that “the claim 

language does not preclude the use of a single, common 

filter that can be used in the logic for recovering the first 

signal portion, as well as the logic for recovering the 

further signal portion.” J.A. 108.

We agree with the Board. The ’353 patent specification anticipates that a user may use the same filter for 

two functions. J.A. 436 (col. 6 ll. 54–58) (“[I]t is necessary 

to provide different filters (or to differently configure the 

filter(s)).”). The specification also incorporates by refer-
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 13

ence the implementation of “different filters, or reconfiguration of the same filter(s)” in a preferred embodiment. Id. (col. 6 ll. 58–59). Intellectual Ventures’ proposed construction requiring two separate filters, 

therefore, would exclude the preferred embodiment of a 

single filter. A construction excluding a preferred embodiment “is rarely, if ever, correct.” PPC Broadband, Inc. 

v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755

(Fed. Cir. 2016). The Board acknowledged that the 

phrase “are reconfigurable” normally indicates a plurality 

of filters. But in light of the ’353 patent’s incorporation of 

a single-filter embodiment, we find the Board’s construction to be reasonable. See id. (“[E]ach and every claim” 

need not “be interpreted to cover each and every embodiment.”). 

CONCLUSION 

We have considered the remainder of Intellectual 

Ventures’ arguments and find them to be unpersuasive. 

The Board did not deny Intellectual Ventures procedural 

due process, and it correctly construed the disputed 

terms. We thus affirm the Board’s decision. 

AFFIRMED

COSTS

No costs.