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In re IPR Licensing, Inc.

United States Court of Appeals for the Federal Circuit

November 22, 2019, Decided



 [*1365]  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 F. App'x 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 [**2]  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.

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942 F.3d 1363 *; 2019 U.S. App. LEXIS 34864 **; 105 Fed. R. Serv. 3d (Callaghan) 639; 2019 WL 6222850


Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2014-00525, IPR2015-00074.

IPR Licensing, Inc. v. ZTE Corp., 685 Fed. Appx. 933, 2017 U.S. App. LEXIS 6846 (Fed. Cir., Apr. 20, 2017)



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Patent Law, US Patent & Trademark Office Proceedings, Appeals, Jurisdiction & Review, Standards of Review, De Novo Review, Subject Matter Jurisdiction