• Nov 22 2019
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  • Category: CAFC Updates

This case returns to the CAFC after remand to the Patent Trial and Appeal Board (“the Board”). In a previous appeal, the CAFC affirmed the Board’s findings that certain claims of IPR Licensing’s U.S. Patent 8,380,244 (relating to a “subscriber unit,” e.g., a mobile device, that can automatically select the best available wireless network and then connect to it) were obvious based on prior art references cited in ZTE’s petition, but remanded as to claim 8 because the CAFC found insufficient record support for the Board’s determination that claim 8 is invalid as obvious. On remand, the Board again found claim 8 unpatentable. In this appeal, Appellant IPR Licensing 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, because it was not mentioned in the only ground on which the Board instituted review. The CAFC agrees, noting that the Board cannot rely on evidence relating solely to grounds on which it never instituted the IPR, because to hold otherwise would allow the Board’s final written decision to rest on arguments that a patent owner has no ability to rebut or anticipate. Finding that the Board’s decision to rely on the Draft Universal Mobile Telecommunications System Standards (“UMTS”) to fill the gap in its evidentiary finding was erroneous, the CAFC reverses the Board’s finding of invalidity and vacates that judgment.

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