IP Law Daily, PATENT—Fed. Cir.: Wireless access device patent mostly invalid as obvious, (Apr 20, 2017)

By Jody Coultas, J.D.

The U.S. Court of Appeals for the Federal Circuit upheld, for the most part, the Patent Trial and Appeal Board’s conclusion that a wireless access device patent held by IPR Licensing, Inc., was invalid as obvious in light of prior art during an inter partes review that was initiated by ZTE Corporation. The court found, however, that the Board’s reasoning was lacking with respect to an obviousness finding on a single dependent claim, and thus vacated and remanded the issue for further proceedings (IPR Licensing, Inc. v. ZTE Corporation, April 20, 2017, Taranto, R.).

U.S. Patent No. 8,380,244 (the ‘244 patent) describes a wireless access device that can automatically switch from a long-range, low-speed, cellular wireless network to a short-range, high-speed, wireless local area network (W-LAN) when a W-LAN is in range and can "revert[] to connecting to the long range network only when out of range of the W-LAN base stations." Claim 1 is representative of all claims except claim 8.

IPRL sued ZTE Corp. and ZTE (USA) Inc. (jointly, "ZTE") and Nokia Corp. for infringement, in separate actions, and ZTE sought inter partes review. After a subsidiary of Microsoft Corporation bought Nokia’s wireless-devices-and-services business, Microsoft filed its own petition for inter partes review of the patent. Microsoft agreed to "proceed solely on the grounds, evidence, and arguments advanced" in ZTE’s petition.

The Patent Trial and Appeal Board determined that claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the ‘244 patent were unpatentable for obviousness over a combination of U.S. Patent No. 6,243,581 (Jawanda), the General Packet Radio Service Standards published by the European Telecommunications Standards Institute in 1998 (GPRS Standards), and the IEEE 802.11 Standard (used for Wi-Fi).

On appeal, IPRL challenged the Board’s construction of the term "plurality of assigned physical channels" as meaning "plurality of physical channels made available for use by the subscriber unit" without a requirement that the subscriber unit select the channel for use. It also challenged the process that led to the adoption of that construction. Specifically, IPRL argued that the Board had relied on hindsight in its analysis of claim 8.

IPRL argued that the Board had relied on a new construction that ZTE had presented in its reply, thereby denying IPRL an adequate opportunity to respond. Even if the reply contained a new argument, IPRL failed to show how it was prejudiced by the Board’s refusal to allow it to respond. The only issue before the court was whether the Board had correctly construed the claim.

The court agreed with the Board that its construction was the broadest reasonable one, and it affirmed the construction. Claim 1 describes a subscriber unit comprising a cellular transceiver configured to communicate with a cellular wireless network through a plurality of assigned physical channels. IPRL argued that all of the claims also require the subscriber unit to be able to "select for use" a certain subset of the physical channels. However, the claims says nothing about allocation, selection for use, or what happens to those channels after they are assigned. The specification did not demand a broadest reasonable interpretation, of a claim not referring to allocation, that requires a subscriber unit capable of exercising discretion in channel allocation. Also, Claim 15 confirmed that claim 1 did not require the subscriber unit to exercise such discretion.

Because the court affirmed the Board’s construction, it also affirmed the decision that claim 1 and the claims it represents—claims 2–7, 14–16, 19–29, 36–38, and 41–44—were unpatentable for obviousness. The parties agreed that the Board’s obviousness determination stood if its claim construction was correct.

However, claim 8 required a separate analysis. Claim 8 covers 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 CDMA transceiver. As a dependent claim, it incorporates all of the limitations of claim 1, including the limitation that the subscriber unit "maintain a communication session with the cellular wireless network in an absence of the plurality of assigned physical channels".

The court vacated the Board’s holding that claim 8 was invalid as obvious. The Board seemed to hold that claim 8 would have been obvious because Jawanda explicitly stated that the wireless data connections could be provided by a CDMA network. Jawanda did not disclose "maintain[ing] a communication session." The Board relied wholly on the GPRS Standard prior art for that limitation. Also, the Board cited no prior art references that disclosed that CDMA networks at the time of the invention could "maintain a communication session" according to the claims. The Board concluded that it would have been obvious to combine the Packet Data Protocol (PDP) Context feature of the GPRS Standard that enabled the subscriber unit to "maintain a communication session" with a CDMA network. The court did not see the support for that inference, however. Because the record might contain evidence to support a motivation to combine the PDP Context feature of the GPRS Standards with the CDMA network referenced in Jawanda, the decision with respect to claim 8 was vacated and remanded for further proceedings.

The cases are Nos. 2016-1374 and 2016-1443.

Attorneys: Gabriel Bell, Richard P. Bress, Jonathan D. Link, Michael J. Gerardi, and Julie M. Holloway (Latham & Watkins LLP) for IPR Licensing, Inc. Charles M. McMahon (McDermott, Will & Emery LLP) for ZTE Corporation, ZTE (USA) Inc., and Microsoft Corporation. Brian Andrew Jones, Jay Reiziss, and Natalie A. Bennett (McDermott, Will & Emery LLP) for ZTE Corporation and ZTE (USA) Inc. Constantine L. Trela, Jr., Richard Aalan Cederoth, Joseph A. Micallef, and Scott Border (Sidley Austin LLP) for Microsoft Corporation.

Companies: IPR Licensing, Inc.; ZTE Corporation; ZTE (USA) Inc.; Microsoft Corporation

Cases: Patent FedCirNews