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In re IPR Licensing, Inc.

United States Court of Appeals, Federal Circuit

November 22, 2019

IN RE: IPR LICENSING, INC., Appellant

          Appeal 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.

          Before Newman, O'Malley, and Taranto, Circuit Judges.

          O'MALLEY, CIRCUIT JUDGE.

         This 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.

         Because 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.

         I. Background

         A. The '244 Patent

         The '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.

         In 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.

         The '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.

         Claim 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 physical channels;
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) transceiver.

Id. at col. 11, ll. 6-16, 39-42.

         Two 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.

         B. ...


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