Ipr Licensing, Inc. v. Zte Corporation
685 F. App'x 933
| Fed. Cir. | 2017Background
- IPR Licensing, Inc. owns U.S. Patent No. 8,380,244 covering dual‑mode devices that switch between cellular and IEEE 802.11 (Wi‑Fi) and can ‘‘maintain a communication session’’ with the cellular network while not using assigned physical channels.
- ZTE (joined by Microsoft) petitioned for inter partes review (IPR) of numerous claims; the PTAB instituted review and found all challenged claims obvious over Jawanda, the GPRS standards, and IEEE 802.11.
- Central disputed claim term: “plurality of assigned physical channels,” present in all challenged claims; claim 8 additionally specifies CDMA as the cellular network.
- IPRL argued the PTAB adopted a new construction offered by ZTE on reply (raising APA notice/prejudice issues) and that the Board improperly used hindsight for claim 8.
- The Federal Circuit affirmed the PTAB’s construction and obviousness determinations for all claims except claim 8, which was vacated and remanded for lack of substantial evidence of a motivation to combine GPRS PDP Context functionality into CDMA as claimed.
Issues
| Issue | IPRL's Argument | ZTE's Argument | Held |
|---|---|---|---|
| Proper construction of “plurality of assigned physical channels” | Must require subscriber unit can "select for use" a subset of assigned channels (ability to exercise allocation discretion) | Term means physical channels made available for use by the subscriber unit (no additional selection/allocation requirement) | Affirmed PTAB: broadest reasonable meaning is "channels made available for use by the subscriber unit" (no selection requirement) |
| Whether PTAB violated APA by relying on a new reply argument | PTAB relied on ZTE’s new reply construction, denying PO chance to respond (prejudice) | ZTE: reply clarified position; PO had opportunity and was not prejudiced | No reversible APA error shown — IPRL failed to show prejudice; court reviews construction de novo and parties had full opportunity on appeal |
| Obviousness of claims other than claim 8 based on Jawanda + GPRS + IEEE 802.11 | Claims nonobvious under proper construction | Prior art discloses a plurality of assigned physical channels and other limitations; claims obvious | Affirmed PTAB: substantial evidence supports obviousness of claims 1–7, 14–16, 19–29, 36–38, 41–44 under the adopted construction |
| Obviousness of claim 8 (CDMA limitation) | No adequate record showing motivation to combine GPRS PDP Context with CDMA to achieve "maintain a communication session" in CDMA | Prior art (Jawanda) mentions CDMA as possible protocol and expert testimony acknowledged later incorporation of GPRS features into some CDMA systems | Vacated and remanded as to claim 8: PTAB lacked substantial evidence showing a motivation to combine GPRS PDP Context into CDMA at the time of invention; further proceedings required |
Key Cases Cited
- Dell Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir.) (APA notice/opportunity to respond in IPR context)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (Sup. Ct.) (PTAB uses broadest reasonable interpretation in IPR)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (Sup. Ct.) (standard of review for factual findings in claim construction)
- SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir.) (remand required when PTAB changes construction after institution)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.) (standard for reviewing obviousness findings and motivation to combine)
- Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir.) (motivation to combine requires evidence of why skilled artisans would combine references)