from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-00525, IPR2015-00074.
Gabriel Bell, Latham & Watkins LLP, Washington, DC,
argued for appellant. Also represented by Richard P. Bress,
Maximilian A. Grant, Jonathan M. Strang; Julie M. Holloway,
San Francisco, CA.
Newman, O'Malley, and Taranto, Circuit Judges.
O'MALLEY, CIRCUIT JUDGE.
case returns to us after remand to the Patent Trial and
Appeal Board ("the Board"). In the previous appeal,
we affirmed the Board's findings that claims 1-7, 14-16,
19-29, 36-38, and 41-44 of U.S. Patent 8, 380, 244 ("the
'244 patent") were obvious based on prior art
references cited in ground one of ZTE's petition, the
only one of three asserted grounds on which the Board
instituted review. We remanded as to claim 8, however,
because we found insufficient record support for the
Board's determination that claim 8 is invalid as obvious.
See IPR Licensing, Inc. v. ZTE Corp., 685 Fed.Appx.
933 (Fed. Cir. 2017). Importantly, we examined each piece of
evidence cited in the Board's order and concluded that
the evidence to which the Board pointed failed-either
individually or collectively- to support the conclusion that
there would have been a motivation to combine the relevant
prior art references. Id. Rather than reverse the
Board's judgment as to claim 8 as unsupported, we
remanded because we could not be sure that the record was
totally "devoid of any possible motivation to
combine." Id. at 940. On remand, the Board
again found claim 8 unpatentable. ZTE Corp. v. IPR
Licensing, Inc., IPR2014-00525, 2018 WL 1224736, at *1
(P.T.A.B. Mar. 6, 2018) (the "Remand
Decision"). In this appeal, Appellant IPR Licensing
("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.
the Board's decision remains unsupported, we reverse the
Board's finding of invalidity as to ground one and,
because all other challenges to the Board's final
judgment of invalidity are waived, we vacate that judgment.
'244 patent recognizes two types of wireless networks.
The first is a wireless local area network, which allows a
user to wirelessly connect a portable electronic device to an
access point, e.g., a router, that is in turn
connected to a network. The second is a cellular network, in
which geographic regions are divided into "cells"
that each contain a "base station." '244
patent, col. 8, ll. 20-31. Users within a given cell connect
their device to a cell's base station, which is in turn
connected to a network like the internet. Connecting to
either type of network has tradeoffs. For example, wireless
local area networks have more limited range but they
generally transmit data faster.
addition to mentioning different types of networks, the
'244 patent cites two relevant methods for allowing users
to access the same network. Id. at col. 2, ll. 10-17
("[T]he nature of the cellular radio spectrum is such
that it is a medium that is expected to be shared.").
The first method, Time Division Multiple Access
("TDMA"), assigns each device a unique time slot
during which the device may transmit data to the base
station. The second method, Code Division Multiple Access
("CDMA"), assigns each device a unique code so that
they can all transmit data at the same time.
'244 patent claims a "subscriber unit,"
e.g., a mobile device, that can automatically select
the best available wireless network and then connect to it.
Id. at col. 2, ll. 63- 67. In particular, the
subscriber unit can connect to a wireless local area network,
if one is in range, or connect to a cellular network if there
is no nearby wireless local area network. Id.
8, which depends on claim 1, provides:
1. A subscriber unit comprising:
a cellular transceiver configured to communicate with a
cellular wireless network via a plurality of assigned
an IEEE 802.11 transceiver configured to communicate with an
IEEE 802.11 wireless local area network; and
a processor configured to maintain a communication session
with the cellular wireless network in an absence of the
plurality of assigned physical channels while the IEEE 802.11
transceiver communicates packet data with the IEEE 802.11
wireless local area network.
. . .
8. The subscriber unit of claim 1, wherein
the cellular wireless network is a code division multiple
access (CDMA) wireless network, and the cellular transceiver
is a cellular code division multiple access (CDMA)
Id. at col. 11, ll. 6-16, 39-42.
limitations recited in claim 8 are relevant to this appeal.
First, claim 8 requires the subscriber unit to "maintain
a communication session with the cellular wireless network in
an absence of the plurality of assigned physical
channels." Id. The Board construed this phrase
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." That
construction was not disputed in the previous appeal. IPR
Licensing, 685 Fed.Appx. at 936 n.1. A logical
connection means the device stores information about the
cellular network even while the device is sending data over a
wireless local area network. This allows the device to
quickly re-establish an end-to-end connection over the
cellular network if necessary. Claim 8 also requires the
subscriber unit to communicate with a CDMA cellular wireless
network via a CDMA transceiver.