Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc.
United States Court of Appeals for the Federal Circuit
May 23, 2019, Decided
2018-1836, 2018-1837, 2018-1838, 2018-1840
[*1013] Taranto, Circuit Judge.
Wireless Protocol Innovations, Inc. (WPI) owns U.S. Patent Nos. 8,274,991, 8,565,256, and 9,125,051. All three patents share a specification and claim methods involving point-to-multipoint communication systems, as well as the systems themselves. Between July and September 2016, TCT Mobile, Inc. and TCT Mobile (US) Inc. (together, TCT) filed four petitions for inter partes reviews (IPRs) of various claims of the ʼ991, ʼ256, and ʼ051 patents—one each for the '991 and ʼ256 patents, and two for the 051 patents—with the Patent and Trademark [**2] Office (PTO) under 35 U.S.C. §§ 311-319. The PTO's Patent Trial and Appeal Board, acting on behalf of the PTO's Director, see 37 C.F.R. §§ 42.4, 42.108, instituted reviews of all challenged claims in all four petitions under 35 U.S.C. § 314.
In February and March 2018, the Board issued final written decisions in all four IPRs under 35 U.S.C. § 318, concluding that all challenged claims are unpatentable. For the ʼ991 patent, the Board held claims 1 and 3-5 un-patentable for obviousness under 35 U.S.C. § 103 on two independent grounds. For the ʼ256 patent, the Board held claims 1, 4, and 7 unpatentable for anticipation under 35 U.S.C. § 102 and also for obviousness. For the 051 patents, the Board held claims 1, 2, 4-7, 9-12, 14-19, 21-23, 25, and 26 similarly unpatentable for obviousness.
WPI appeals all four Board decisions. For the ʼ991 patent, we reverse the Board's decision on the first obviousness ground because the combination of asserted prior-art references does not disclose every element of the challenged claims. We vacate and remand the Board's decision on the second obviousness ground because the Board applied a claim construction that contradicts explicit teachings in the ʼ991 patent. As to the Board's decisions for the '256 and 051 patents, we see no error and therefore affirm the unpatentability rulings as to those patents.
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771 Fed. Appx. 1012 *; 2019 U.S. App. LEXIS 15277 **
WIRELESS PROTOCOL INNOVATIONS, INC., Appellant v. TCT MOBILE, INC., TCT MOBILE (US) INC., Appellees
Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.
Prior History: [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-01494, IPR2016-01704, IPR2016-01861, IPR2016-01865.
Disposition: REVERSED IN PART, VACATED IN PART, AND REMANDED IN APPEAL NO. 2018-1836. AFFIRMED IN APPEAL NOS. 2018-1837, 2018-1838, AND 2018-1840.
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Patent Law, Nonobviousness, Elements & Tests, Ordinary Skill Standard, Graham Test, Secondary Considerations, Prior Art, Evidence, Burdens of Proof, Allocation, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence