In Re: IPR Licensing, Inc.
Docket Nos. 2018-1805 (IPR2014-00525, IPR2015-00074)
NEWMAN, O’MALLEY, TARANTO
November 22, 2019
Brief Summary: Board remanded IPR decision reversed and vacated as “supported by the same faulty reasoning” as the first IPR decision.
Summary: This appeal follows a prior remand of the USPTO Board’s decision finding claim 8 of US 8,380,244 relating to wireless networks obvious to be based on “insufficient record support” (“the Board’s analysis was wanting”; IPR Licensing v. ZTE Corp., FC 2017). The FC panel opinion also explains that the DC of Delaware previously found all of the asserted ‘244 claims infringed and not invalid, but “post-trial proceedings” were “eventually stayed…pending completion of [this] IPR” (that decision is not on appeal here). On appeal here is the Board’s renewed conclusion on remand that claim 8 is invalid for obviousness. IPRL argued “that the only additional evidence the Board cited in support of its conclusion on remand was not part of the record before the Board.” Claim 8 requires a “‘subscriber unit’ to ‘maintain a communication session with the cellular wireless network in an absence of the plurality of assigned physical channels’”, which “[t]he Board ‘construed…to mean ‘maintain a logical connection with the cellular wireless network when none of the plurality of physical channels are in use by the subscriber unit’” (the same construction not challenged in the previous appeal), and “to communicate with a CDMA cellular wireless network via a CDMA transceiver.” The first Board decision was remanded for the Board to assess whether there was substantial evidence” of “a motivation to combine the PDP Context feature of the GPRS standards with the CDMA network referenced in Jawanda”, only with respect to claim 8 and Ground One of the IPR Petition. On remand, the Board ordered ZTE (IPRL) “to submit a three page brief…indicating whether the evidence was originally introduced or argued in the Petition, concerning the motivation to combine” but “ZTE never filed anything.” The FC panel opinion explains that the Board reached the same conclusion “[d]espite no additional evidence or argument”, noting that “the only additional evidentiary support” was the Board’s reference to the “UMTS” reference. “The Board”, the FC panel wrote, “cannot rely on evidence relating solely to grounds on which it never instituted” (In re Magnum Oils, FC 2016; Rovalma, FC 2017; In re NuVasive, FC 2016), and “ZTE’s petition does not mention UMTS in discussing ground one-the only ground on which the Board instituted review” (confirmed by ZTE’s expert) and “IPRL’s response therefore never referenced it either.” ZTE/IPRL argued that the Board relied on UMTS “only as evidence” that the skilled artisan would have known the prior art could be combined, but the FC panel found this to be improper since, e.g., ZTE did not rely “on the UMTS standards in its petition” and “never pointed to the Draft UMTS Standards” even after “the Board specifically asked ZTE” to do so. The FC panel concluded that “[a]part from UMTS, the Board’s decision is supported by the same faulty reasoning” that was previously rejected, and therefore reversed and vacated the decision (In re Power Int., FC 2018 (reversing because ‘[t]he board had two opportunities’ to justify its position and ‘failed’”)). The FC panel also found remand as to the non-appealed claims was not appropriate under SAS.