This appeal is well written! This is just one argued point. The rest are just as good. This deals with what is considered prior art.
“Cisco argues that ChanBond mischaracterizes how the Board relied on Qualcomm. Resp. Br. at 45. However, as detailed in ChanBond’s opening brief, that the Board’s obviousness decision relies extensively on Qualcomm as prior art cannot be legitimately disputed. See Op. Br. at 46–47 (citing FWD at 39 (Appx0039)). The Board’s material reliance on Qualcomm is critically dependent on the Board’s presumption that Qualcomm is prior art, and if Qualcomm is not considered prior art (as the Board stated on institution), then the Board’s findings concerning Qualcomm would have no relevance to this proceeding.
The Board is required to provide patent owners with prior notice of “the matters of fact and law asserted” before an IPR hearing. 5 U.S.C. § 554(b)(3); Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (quoting In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011)). “The ultimate criterion is whether the appellant has had before the PTO a fair opportunity to react to the thrust of the rejection.” Id. (quotations omitted); see also In re Biedermann, 733 F.3d 329, 336 (Fed. Cir. 2013). Thus, the question to be answered here is whether ChanBond had a “fair opportunity to react to the thrust of the rejection.” Rambus Inc., 731 F.3d at 1255. The answer plainly is “no,” because the Board notified ChanBond in the institution decision that it would not consider Qualcomm as a prior art reference teaching the use of cellular phones with the capability of transmitting data from a portable computer over a wireless network. Inst. Dec. at 31–32 (Appx0236–0237). In light of the Board’s definitive statement on the matter, ChanBond had no reason to address Qualcomm in its expert declaration or subsequent written submissions to the Board. “
