IPR: Evidence Relied Upon Must be Derived from the IPR Petition

In re IPR Licensing, Inc. (Fed. Cir. 2019) (Note – IPRL is a subsidiary of InterDigital).

After IPRL sued ZTE for infringement (D.Del), that ZTE (et al.) turned around and petitioned for inter partes review of IPRL’s U.S. Patent No. 8,380,244 (dual mode communications using cellular and WiFi networks).  The PTAB originally sided with the patent challenger — finding all of the challenged claims obvious.  On appeal, however, the Federal Circuit vacated that decision as to Dependent Claim 8 that particularly required CDMA compatibility. In particular, the Federal Circuit found insufficient evidence to “support the Board’s articulated motivation to combine the asserted references to arrive at the invention defined in claim 8.”  In particular, although the cited prior art states that data connections could be provided via CDMA, the reference did not teach using CDMA to “maintain a communication session”  as required by the claim.  IPRL I Decision.

On remand, the Board rewrote its decision but again concluded that Claim 8 was unpatentable as obvious based upon the same prior art record.  And, on appeal (before a new panel), the Federal Circuit has again faulted the Board’s analysis — this time on procedural grounds:

[IPRL] argues that the only additional evidence the Board cited in support of its conclusion on remand was not part of the record before the Board. We agree.

What happened here in particular is that the Board relied upon the Universal Mobile Telecommunications System Standards (“UMTS”) as prior art for showing the ability to maintain a communication session using CDMA.  The problem: UMTS had been introduced as prior art in the original petition, but only to Count 3; while in its pre-SAS institution decision the Board only instituted as to Count 1 (that did not rely on UMTS).

On appeal here, the Federal Circuit explained that:

The Board … cannot rely on evidence relating solely to grounds on which it never instituted. To hold otherwise would allow the Board’s final written decision to rest on arguments that a patent owner has no ability to rebut or anticipate. . . .

ZTE’s petition does not mention UMTS in discussing ground one—the only ground on which the Board instituted review. IPRL’s response therefore never referenced it either. Nor did ZTE’s reply. Dr. Bims, ZTE’s expert, also confirmed that the Board’s review was not based on UMTS. . . .

The Board’s decision to rely on the Draft UMTS Standards to fill the gap in its evidentiary finding was, thus, erroneous.

Slip Op.  The Federal Circuit then considered whether to remand for the PTAB to consider all of the grounds as required by SAS.  However, the Board found that ZTE had waived its right to request such a remand. (Although ZTE had briefed the case and presented oral arguments, it subsequently withdrew from the appeal based upon a settlement agreement between the parties).

Reversed and Vacated.

I’ll note here that it is unlikely that the PTO will touch this case again with ZTE’s withdrawal and the lack of remand.  However, it would be interesting if the agency did pick it up and reopen the IPR as to all of the grounds.

Note also that the patentee appealed the substance of the obviousness argument — arguing that the claim wasn’t obvious even considering UMTS. On appeal, the Federal Circuit “express[ed] no opinion on the merits of the Board’s reliance on the Draft Standards or its conclusions about what those standards might have taught one of skill in the art.”

15 thoughts on “IPR: Evidence Relied Upon Must be Derived from the IPR Petition

  1. 6

    What I’m wondering is whether and how any (to what degree) estoppel would / will interplay in any further court — or IPR — case(s).

    Anyone?

    1. 6.1

      IPR estoppel does not apply in suits against different parties, and even against the same party [the petitioner here] it does not prevent validity challenges that are not based on publications or patents. E.g., prior public use or on sale products or methods, or 112 attacks.

  2. 5

    The Board understood that the capability of “maintaining a communication session” would have been ridiculously obvious to any person of skill in the art. But the IPR petitioner screwed up by not crossing its T’s on this feature, and the Board didn’t want to sustain the claim simply because of a petitioner screw-up (especially on a patent assertable against an entire industry of handset makers).

    I suspect the outcome might have been different if the Board relied on the CDMA standard instead of UMTS. The primary reference (Jawanda) expressly stated that you can establish connections using CDMA; if the Board could have shown that maintaining communication sessions were an inherent feature (or at least an explicitly disclosed option) in the CDMA standard itself, they could have relied on the general knowledge of a PHOSITA to hold this claim obvious, as that knowledge would have included knowledge of CDMA. Under that reasoning, the CDMA standard would not be an additional prior art reference, but simply evidence of what a PHOSITA would have found obvious from the disclosures of Jawanda. But you can’t really employ that reasoning if you’re using a different (non-CDMA) standard, as was the case here.

  3. 4

    Pyrrhic victory at best.

    Next.

  4. 3

    A technical IPR win for a patent owner’s one remaining claim, on which the patent owner wisely settled with the Petitioner. Will it simply cause petitioners to duplicate more citations of the same art in their petitions to avoid this kind of Fed. Cir. decision?

  5. 2

    Elon Musk is not a ridiculous fraud and not a perfect example of everything wrong with tech bro fraud culture.

    Give him your money! And for gobs sake keep those patent flowing to the Silly Con Valley bros. They are sooooo important and wise. Who else could imagine a device that does basic math AND includes a “Permuting device”! You can use it to compare stuff! Super techno!

    1. 2.1

      ?

      You do realize that some of the worst anti-patent rhetoric comes from those same “Silly Con Bros” (who happen to also be your “onepercenters” that you like to rail against).

      That cognitive dissonance of yours is kicking in again.

      1. 2.1.1

        Excuse me, Bildo? I’m not sure what you’re getting at.

        Surely you aren’t suggesting that a substantial fraction of skilled artisans in the software community are among those most opposed to the patenting of logic on a computer.

        Next thing you know you’ll be telling me that nearly all scientists agree with the reasoning in Mayo (which is true).

        Clarify yourself, Bildo. You just might be onto something.

        1. 2.1.1.1

          You missed (clearly on purpose) the gist of the statement (and it had nothing to do with ANY notion that what is being opposed to is being PROPERLY opposed to).

          This is not something that I need to “clarify myself” over. The lack of clarity is NOT coming from my end. It is beyond clear that YOU, being so wrapped up in your own feelings, simply cannot comprehend reality and everything that finally penetrates into your consciousness is entirely warped (very much like a certain president).

          1. 2.1.1.1.1

            That made no sense at all, but I do like your creative use of caps etc.

            1. 2.1.1.1.1.1

              Given your inability to comprehend anything that is pro-patent, it is no surprise at all to have you state that you cannot understand the clear post that I presented.

              Thanks for proving my point.

    2. 2.2

      “Don’t Be Fooled by His Patent Purge: Elon Musk is Just Another Hypocritical Tech Billionaire”

      link to ipwatchdog.com

  6. 1

    Providing a data session via CDMA is a completely different technological problem as compared to maintaining a communication session via CDMA. It’s like someone picking up a phone call versus actually having a call with that person. It’s amazing the petition was even granted.

    /super credulous born yesterday patent luvvah off

    1. 1.1

      Anyone have a towel for Malcolm to clean himself after he has flogged and beaten his Strawman?

      1. 1.1.1

        Talk to Dennis. I’m just quoting his write-up verbatim.

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