by Dennis Crouch
Wireless Protocol Innovations (WPI) v. TCT Mobile, Inc. (Fed. Cir. 2022) (non-precedential)
Literally Disclosed: In IPR round one, the PTAB sided with patent challenger TCT Mobile and found claims 1 & 3-5 of US8274991 unpatentable as obvious. On appeal though the Federal Circuit partially reversed, vacated and remanded. The appellate decision altered claim construction and told the PTAB to try its analysis again with the new construction.
Not Literally Disclosed: On remand, the patent challenger TCT successfully shifted its argument based upon the Federal Circuit’s new claim construction. The PTAB again found the claims obvious based upon the same prior art–albeit with a slightly different explanation. In its original decision, the PTAB concluded that the prior art disclosed a particular claim element. On remand, that conclusion was no longer appropriate because of the altered claim construction. Still, the PTAB concluded that it would have been obvious to modify the prior art achieve the invention as construed. I call this the not-literally-disclosed ground.
On appeal this time, the Federal Circuit has fully reversed–holding that TCT had waived the not-literally-disclosed ground by failing to raise it in IPR Round One–prior to the first Federal Circuit appeal. The court suggests here that an altered argument might be appropriate if the new claim construction had suddenly arrived out of the blue sky. But in this particular case, the Federal Circuit’s preferred claim construction was the construction argued throughout the IPR by the patent owner WPI.
TCT was on notice of WPI’s claim construction position [during the IPR Round One briefing] and TCT thus forfeited the Sen-modification argument by failing to even attempt to introduce it prior to remand. Our decision in Wireless Protocol I did not set forth a new claim construction never contemplated by the parties.
The original Federal Circuit decision issued in the summer of 2019. The Board took 21 months to issue the new decision on remand. The patentee had also argued that the delay was improper because it blew past the 6-month goal set within the Board’s Standard Operating Procedure. On appeal, the Federal Circuit concluded that the parties had no appealable right in this situation:
We disagree with WPI that the Board violated WPI’s due process rights or any statute, regulation, or internal operating procedure by not meeting the goal to issue remand decisions within six months of this court’s mandate as set forth in the Board’s Standard Operating Procedure 9.
Slip Op. (emphasis in original).