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
Case: 22-1387 Document: 67 Page: 2 Filed: 09/01/2023
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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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 3
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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4 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC.
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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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 5
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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6 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC.
[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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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 7
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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8 SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC.
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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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 9
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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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 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
Case: 22-1387 Document: 67 Page: 11 Filed: 09/01/2023
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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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 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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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 13
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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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 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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SISVEL INTERNATIONAL S.A. v. SIERRA WIRELESS, INC. 15
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