Sisvel International S.A. v. Sierra Wireless, Inc.

Court: Court of Appeals for the Federal Circuit
Date filed: 2023-09-01
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Case: 22-1387    Document: 67    Page: 1   Filed: 09/01/2023




   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, Wilming-
 ton, DE, argued for appellant. Also represented by
 TIMOTHY DEVLIN.

     AMANDA TESSAR, Perkins Coie LLP, Denver, CO, for ap-
 pellee 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 pa-
 tent”) 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 pro-
 vided below, we affirm.




     1    Appellees Sierra Wireless, Inc. and Thales DIS AIS
 Deutschland GmbH (collectively, “Appellees”) filed the pe-
 titions seeking inter partes review. Dell, Inc. and Cradle-
 point, Inc. did as well and were initially parties to this
 appeal. Subsequently, the Court granted Dell’s and Cra-
 dlepoint’s motions to withdraw. See Sisvel Int’l S.A. v. Si-
 erra 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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                                 I
                                 A
      The ’698 and ’196 patents claim methods and apparat-
 uses 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 Sig-
 nalling Method,” employs “a connection setup rejection
 message . . . to direct a mobile communication means to at-
 tempt 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 fre-
 quency.” Id. col. 3 ll. 9-11.
     Claim 10, reproduced below, is representative:
     10. A channel reselection method in a mobile com-
     munication 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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                              B
     The ’196 patent, sharing the title “Cell Reselection Sig-
 nalling Method,” is a continuation of the application that
 eventually gave rise to the ’698 patent. Claim 1, repro-
 duced below, is representative:
     1. An apparatus, where the apparatus is config-
     ured:
     to receive a connection rejection message in a mo-
     bile cellular network, the connection rejection mes-
     sage 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 pa-
     rameter 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 connec-
     tion rejection message.
 ’196 patent col. 8 ll. 2-12 (emphasis added). All the chal-
 lenged 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 determina-
 tions of law reviewed de novo where based on intrinsic evi-
 dence, 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 pros-
 ecution 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 reject-
 ing a connection request from a mobile station” – would im-
 properly 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.” Phil-
 lips, 415 F.3d at 1323.
      Here, the intrinsic evidence provides no persuasive ba-
 sis 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 pa-
 tent col. 8 ll. 2-12 (claim limitation directed to “receiv[ing]
 a connection rejection message in a mobile cellular net-
 work”). The specification, while only expressly disclosing
 embodiments in a UMTS or GSM network, also broadly
 teaches:
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     [t]he invention is applicable in many different cel-
     lular telecommunication systems, such as the
     UMTS system or the GSM system. The invention
     is applicable in any such cellular telecommunica-
     tion system, in which the cellular telecommunica-
     tion network sends a rejection message as a
     response to a connection setup request from a mo-
     bile 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 per-
     missive, 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 cellu-
     lar telecommunication system must be a UMTS
     system or GSM system.
 J.A. 13.
      Sisvel counters that UMTS and GSM “are the only spe-
 cific 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 unmistaka-
 ble 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 ac-
 cept 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 chal-
 lenged claims that do not depend on its preferred claim con-
 struction, 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] mo-
 tion 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 col-
 lection 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 Appel-
 lant’s Br. 13-17; Appellant’s Reply Br. 2-8.
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 contexts of claim reissuance 4 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 prepon-
 derance 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 pre-
 ponderance of the evidence, that any proposed substitute
 claims are unpatentable.”), it is Sisvel’s burden, as the pa-
 tent owner, to show that the proposed amendment com-
 plies with relevant regulatory and statutory requirements,
 see 37 C.F.R. § 42.121(d)(1) (“A patent owner bears the bur-
 den of persuasion to show, by a preponderance of the evi-
 dence, 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 Adminis-
 trative 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 chap-
 ter.”).
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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 substan-
 tial evidence. See Veritas Techs. LLC v. Veeam Software
 Corp., 835 F.3d 1406, 1413 (Fed. Cir. 2016) (reviewing de-
 nial of contingent motion to amend under APA). Legal er-
 ror 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 en-
 large the scope of the claim . . . is a matter of claim con-
 struction, which we review de novo, while giving deference
 to subsidiary factual determinations.”).
     We apply these same standards here. If the Board le-
 gally 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 mo-
 tion to amend on that ground, and we would have to re-
 verse (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 de-
 nial of Sisvel’s revised motion to amend.
     The parties both propose that we are reviewing for sub-
 stantial evidence. Compare Appellant’s Reply Br. 15 (“Ac-
 cordingly, 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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 disagree. Instead, as we have noted, we are applying the
 APA standard of review, which here requires us to deter-
 mine 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 be-
 low, with additions shown underlined and deletions
 stricken out.


      Original Claim 10           Substitute Claim 36
  A    channel    reselection A    channel       reselection
  method in a mobile commu-   method in a mobile commu-
  nication means of a cellularnication means of a cellular
  telecommunication system,   telecommunication system
  the method comprising the   station of a telecommunica-
  steps of:                   tions network implement-
                              ing the RRC protocol, the
  receiving a connection re-
                              method comprising the
      jection message;
                              steps of:
  observing at least one pa-
                              receiving a connection re-
      rameter of said connec-
                                  jection message con-
      tion rejection message;
                                  taining a frequency
      and
                                  parameter indicated by
  setting a value of at least     the      telecommunica-
      one parameter for a         tions network imple-
      new connection setup        menting       the    RRC
      attempt based at least      protocol;
      in part on information
                              observing at least one pa
      in at least one fre-
                                  rameter         of     the
      quency parameter of
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 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC.        11



      said connection rejec-         frequency parameter
      tion message.                  contained within said
                                     connection   rejection
  ’698 patent col. 8 ll. 34-43.
                                     message; and
                                  setting a value of at least
                                      one frequency parame-
                                      ter for a new connec-
                                      tion setup attempt
                                      based at least in part
                                      on information in at
                                      least one frequency pa
                                      rameter of, the connec-
                                      tion setup attempt
                                      using the frequency pa-
                                      rameter       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 impermissi-
 bly 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 pa-
 rameter” 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 re-
 jection 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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     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 fre-
 quency parameter, the substitute claim removes this re-
 quirement. 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 con-
 ceivable 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, Appel-
 lees 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 multi-
 plying and then dividing by the same frequency parameter,
 [the new connection setup attempt] used [the frequency pa-
 rameter], 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 fre-
 quency parameter,” in substitute claim 36 the value of at
 least one frequency parameter need only “us[e] the fre-
 quency 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 parame-
 ter is used, while in the original claim – more narrowly –
 at least some content (i.e., “information”) from the param-
 eter had to be used. Embodiments that only use the exist-
 ence 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 impermissi-
 bly 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 ap-
 prove 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 prelimi-
 nary 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 pro-
 posed 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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 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 obvious-
 ness 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 cor-
 rect (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 argu-
 ment 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 discre-
 tion 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 ef-
 fort 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 impermis-
 sibly broader than original claim 10, the dependent claims,
 which are not separately argued, are also impermissibly
 broadened.
      We conclude, therefore, that the Board correctly deter-
 mined 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