This morning the Federal Circuit released a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board. The Federal Circuit also released two nonprecedential orders dismissing appeals. Here is the introduction to the opinion and links to the dismissals.
Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc. (Nonprecedential)
This is the second appeal arising from inter partes review of U.S. Patent No. 8,274,991 (’991 patent). On February 13, 2018, the Patent Trial and Appeal Board (Board) issued a final written decision finding that claims 1 and 3–5 of the ’991 patent are unpatentable as obvious in view of two separate prior art combinations. TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., IPR No. 2016-01494, 2018 WL 914699, at *1, *16 (P.T.A.B. Feb. 13, 2018) (Final Written Decision). Patent Owner Wireless Protocol Innovations, Inc. (WPI) appealed to this court. On appeal, we reversed the Board’s unpatentability finding with respect to the first ground. Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc., 771 F. App’x 1012, 1016–18 (Fed. Cir. 2019) (Wireless Protocol I). We also vacated the Board’s unpatentability finding with respect to the second ground because we found that it was premised on an incorrect construction of “grant pending absent state.” Id. at 1018. We remanded for further proceedings in view of our construction that the claimed “grant pending absent state” does “not [] permit the transmission of upstream data.” Id.
On remand, the Board reconsidered the second ground raised in TCT’s petition and found that U.S. Patent No. 6,466,544 (Sen) does not disclose the “grant pending absent state” limitation because Sen’s “Packet Standby” state permits some transmission of data packets. The Board nonetheless found all challenged claims were unpatentable because it would have been obvious to modify Sen to include a “grant pending absent state” as construed by this court. TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., IPR No. 2016-01494, 2021 WL 1686514, at *10 (P.T.A.B. Apr. 28, 2021) (Remand Decision). TCT raised that unpatentability argument based on the modification of Sen to meet the “grant pending absent state” claim limitation for the first time on remand.
WPI appeals, arguing, among other things, that the Board violated WPI’s due process rights by issuing its remand decision 21 months after this court’s mandate and that the remand decision improperly relied on a new theory. We disagree with WPI that the Board violated WPI’s due process rights or any statute, regulation, or internal operating procedure by not meeting the goal to issue remand decisions within six months of this court’s mandate as set forth in the Board’s Standard Operating Procedure 9. However, after review of the inter partes review record, we agree with WPI that TCT improperly raised the Sen-modification argument on remand. WPI’s patent owner response sufficiently put TCT on notice of WPI’s particular understanding of the claim, including the construction of “grant pending absent state” we ultimately adopted in our prior decision. In this circumstance, TCT’s failure to raise its Sen-modification argument in its reply means that TCT forfeited the Sen-modification argument. Accordingly, we reverse the Board’s remand decision.