The latest happenings in the ZTE v IDCC USPTO PTAB case. ZTE has to produce a maximum of 3 pages addressing the citations to the CDMA patent the CAFC remanded back.
Paper 54
571-272-7822 Entered: July 24, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
ZTE CORPORATION and ZTE (USA) INC.,
Petitioner,
v.
IPR LICENSING, INC.,
Patent Owner.
____________
Case IPR2014-00525
Patent 8,380,244 B2
____________
Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
BEVERLY M. BUNTING, Administrative Patent Judges.
BUNTING, Administrative Patent Judge.
ORDER
Conduct of the Proceedings
37 C.F.R. § 42.5
IPR2014-00525
Patent 8,380,244 B2
2
I. INTRODUCTION
A final decision was entered in this proceeding on September 14,
2014, in which we determined that Petitioner had proven, by a
preponderance of the evidence, that claims 1–8, 14–16, 19–29, 36–38, and
41–44 of the ’244 patent were unpatentable. Paper 48. The final decision
was appealed by Patent Owner to the United States Court of Appeals for the
Federal Circuit. On April 20, 2017, the Federal Circuit affirmed with
respect to all claims, but vacated our finding of obviousness of claim 8,
which depends from claim 1, and remanded for further consideration. IPR
Licensing, Inc. v. ZTE Corp., ZTE (USA) Inc., Microsoft Corp., Nos. 2016-
1374, 2016-1443 (Fed. Cir. Apr. 20, 2017).1 In particular, the Federal
Circuit agreed with our claim construction for the claim 1 phrase
“maintain[ing] a communication session,” but held that “substantial
evidence does not support the Board’s articulated motivation to combine the
asserted references to arrive at the invention defined in claim 8.” Id. at 3.
The Board held a conference call on July 18, 2017, among
representatives for Petitioner, Patent Owner, and Judges Medley, Quinn, and
Bunting to discuss potential actions to be taken in view of the remand by the
Federal Circuit. A court reporter was present on the call, and a transcript of
the call is to be filed in due course by Patent Owner as an exhibit.
Both Petitioner and Patent Owner agree that the narrow issue to be
addressed regarding claim 8 is the motivation to combine the PDP Context
feature of the GPRS standards that enables the subscriber unit to “maintain a
communication session” with a CDMA network. Id. at 11–13. In addition,
1 The motion of joined Petitioner Microsoft Corporation, requesting
termination of its participation in this proceeding, was granted May 23,
2017. Paper 53.
IPR2014-00525
Patent 8,380,244 B2
3
both parties agree that additional briefing beyond the arguments and
evidence presently in the current record is unnecessary.
We authorized Petitioner to file a three (3) page paper, which is due
no later than August 1, 2017. This paper is limited to a numeric listing of
citations to the previously existing record, indicating where the evidence was
originally introduced or argued in the Petition, concerning the motivation to
combine the PDP Context feature of the GPRS standard that enables the
subscriber unit to “maintain a communication session” with a CDMA
network as recited in claim 8. While the paper may include a short
introductory paragraph, it is not to include any discussion or argument.
Quotes from the brief are permitted, for example:
1. “There is a strong motivation to combine Jawanda with the IEEE
802.11 Standard and the GPRS Standards.” Paper 1, 25.
Patent Owner is not authorized to file a response at this time, but
should request authorization via a brief and non-argumentative email to
trials@uspto.gov after reviewing Petitioner’s filing, should it feel
observations are necessary.
II. ORDER
In consideration of the foregoing, it is
ORDERED that Petitioner is authorized to file a three (3) page paper
no later than August 1, 2017, limited to a listing indicating citations to the
Petition indicating evidence directed to the motivation to combine the PDP
Context feature of the GPRS standard that enables the subscriber unit to
“maintain a communication session” with a CDMA network; and
IPR2014-00525
Patent 8,380,244 B2
4
FURTHER ORDERED that Patent Owner is not authorized to file
observations at this time, and may contact the Board should it feel
observations are necessary.
