In Re Ipr Licensing, Inc., 942 F.3d 1363

Background

The ’244 patent claims a subscriber unit that can auto-select between an IEEE 802.11 (Wi‑Fi) network and a cellular network; claim 8 adds that the cellular network is CDMA and the device maintains a logical (PDP‑context‑like) connection to the cellular network while using Wi‑Fi.
ZTE petitioned for IPR on three grounds; the Board instituted only ground one (Jawanda + GPRS + IEEE 802.11) and found most claims, including claim 8, obvious.
The Federal Circuit initially affirmed the Board as to all claims except claim 8, vacating claim 8’s invalidity finding and remanding because the Board lacked record support that a POSITA would be motivated to combine GPRS’s PDP Context (TDMA) into a CDMA system.
On remand the Board again found claim 8 obvious, but relied in part on the UMTS (WCDMA) standard—material that was not part of the instituted ground or the record for ground one.
The Federal Circuit held the Board erred by relying on non‑instituted prior art (UMTS) that the patent owner had no chance to rebut, reversed the Board’s finding as to claim 8, and vacated the Board’s final judgment; ZTE’s later request to remand on non‑instituted grounds was waived by withdrawal.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the Board may rely on UMTS (non‑instituted prior art) to find claim 8 obvious	Board relied on UMTS outside the instituted ground and record; patent owner had no chance to respond	UMTS was proper background evidence showing a POSITA would know PDP Context could apply to CDMA	Court: Board erred; reliance on UMTS was improper because it was outside the instituted ground and the patent owner lacked notice/rebuttal opportunity; reversed as to claim 8
Whether remand should be ordered to consider non‑instituted grounds (SAS issue)	Remand unnecessary; no cross‑appeal/jurisdiction	Remand to allow Board to consider other petitioned grounds	Court: Cross‑appeal deadline is not jurisdictional, but ZTE waived remand request by withdrawing from appeal; remand denied
Whether failure to file a cross‑appeal deprives the court of authority to remand	Cross‑appeal absence eliminates jurisdiction to consider non‑instituted grounds	Cross‑appeal rule is procedural, not jurisdictional; court can remand	Court: Cross‑appeal deadline is a claim‑processing rule, not jurisdictional; absence does not bar remand (but waiver controlled outcome here)
Whether Board’s remaining rationale on remand was supported by substantial evidence	IPRL: Remaining rationale repeats previously rejected reasoning and lacks substantial evidence of motivation to combine	ZTE: Prior testimony and petition support motivation to combine PDP Context into CDMA	Court: Remaining record evidence is insufficient; Board failed to show a motivation to combine at the time of invention; decision reversed and vacated as to claim 8

Key Cases Cited

Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir.) (administrative‑law limits on PTAB decisionmaking)
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir.) (Board must base decision on arguments advanced and allow response)
In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir.) (de novo review for whether Board relied on new arguments)
Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir.) (patent owner lacks notice on non‑instituted grounds)
Bowles v. Russell, 551 U.S. 205 (U.S.) (distinguishing jurisdictional statutory deadlines from court‑promulgated rules)
Hamer v. Neighborhood Hous. Servs. of Chicago, 138 S. Ct. 13 (U.S.) (appellate filing rules in the Federal Rules are not jurisdictional absent a statutory command)
In re Power Integrations, Inc., 884 F.3d 1370 (Fed. Cir.) (reversal where Board had multiple chances and failed to justify its position)
Minnesota Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294 (Fed. Cir.) (pre‑Hamer treatment of cross‑appeal requirement)
Lone Star Silicon Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225 (Fed. Cir.) (following intervening Supreme Court precedent over earlier panel decisions)
Gunter v. Bemis Co., 906 F.3d 484 (6th Cir.) (cross‑appeal deadline is not jurisdictional)
Mathias v. Superintendent Frackville SCI, 876 F.3d 462 (3d Cir.) (same)