Zyxel Comms. Corp. v. UNM Rainforest Innovations, Appeal Nos. 2022-2220, -2250 (Fed. Cir. July 22, 2024)
Our Case of the Week provided new guidance on amendment proceedings under the Patent Trial and Appeal Board’s 2019 Motion to Amend Pilot Program in AIA post-grant proceedings. The program allows for preliminary Board feedback and revisions to a patentee’s motion to amend disputed claims. In these cross-appeals from an inter partes review of a broadband communications patent owned by UNM Rainforest Innovations (“UNMRI”), the Federal Circuit found that the Board had correctly granted a motion to amend claims it found to be invalid, but remanded the issue of whether those substitute claims were themselves invalid as a matter of collateral estoppel in view of the Court’s disposition of other issues on appeal.
The IPR concerned UMNRI’s U.S Patent No. 8,265,096, which is directed to methods of organizing information for transmission in wireless broadband applications. The challenged claims generally covered the use of two “sections” of structured information configured to accommodate faster- and slower-moving users, with limitations on the placement of “pilot symbols,” or non-data symbols transmitted at known intervals to help correct for changing channel conditions. Relevant to the appeal, independent claim 1 of the ’096 patent differentiated its sections based on the comparative “symbol period”—or the amount of time between the transmission of successive pilot symbols—whereas independent claim 8 differentiated its sections based on the comparative “symbol density,” or the number of pilot symbols transmitted during a particular time period. The Board had determined in the IPRs that claim 1 and its challenged dependents were obvious over a combination of prior art referred to as Talukdar and Li, but found that petitioner Zyxel had not shown claim 8 to be obvious over a combination of Talukdar and a third reference referred to as Nystrom. The Board also granted UNMRI’s contingent motion to amend claim 1 and its challenged dependents to add limitations that differentiated the claimed sections based on pilot symbol density as well as symbol period.
During the IPR, Zyxel had argued that UNMRI’s Motion to Amend was deficient because it failed to show written description support for all claim limitations in the proposed substitute claims as required by 37 C.F.R. § 42.121(b). Although the Board agreed with Zyxel in its preliminary guidance under the MTA Pilot Program—then rejected a revised motion to amend because it did not alter the proposed claims as required by the Program regulations—the Board ultimately permitted UNMRI to identify the additional written description support in a reply to its original motion. The Federal Circuit rejected Zyxel’s argument that this remained deficient, and noted that an express purpose of the MTA Pilot Program was to allow for the correction of errors identified by the Board in its preliminary guidance. The Court added that the Board had not abused its discretion in permitting UNMRI to do that in a reply brief (or that it was harmless error if it had).
However, the Federal Circuit reversed the Board’s determination that Zyxel had not shown claim 8 to be invalid as obvious. The Court stated that the combination of Talukdar and Nystrom clearly disclosed the limitations drawn to pilot symbol density and that the Board’s conclusion of no motivation to combine was not supported by substantial evidence. The Court also affirmed the Board’s finding that claim 1 and its dependents (keyed to pilot symbol period instead of density) were obvious over Talukdar and Li. Because UMNRI’s proposed substitute for those claims had only added the symbol density limitation that the Board had erroneously determined was not supplied by the prior art, the Court remanded the case for the Board to determine whether the substitute claims were invalid under collateral estoppel in view of its disposition on claim 8. Additionally, notwithstanding Zyxel had only argued that the substitute claims were invalid over Talukdar and Li, the Court expressly suggested the Board might wish to consider sua sponte whether the claims were invalid over the combination of Talukdar, Li, and Nykstrom.
Among other things, the Federal Circuit also rejected UNMRI’s argument that Zyxel’s expert testimony should have been excluded on grounds that the expert appeared to have merely signed off on a report prepared by a different expert. The Court reasoned that, unlike other cases in which an expert’s testimony had been excluded when it was revealed they had not performed the analysis, there was substantial evidence in this matter that Zyxel’s expert had performed his own analysis and independently assessed the prior expert’s conclusions, such that UNMRI’s objections went to weight instead of admissibility. The Board’s decision was thus affirmed in part, reversed in part, and remanded for further proceedings.
The opinion can be found here.
By Jason A. Wrubleski
ALSO THIS WEEK
SoftView LLC v. Apple Inc., Appeal No. 23-1005 (Fed. Cir. July 26, 2024)
In a second case last week that addressed estoppel issues, the Federal Circuit affirmed in part a decision by the Patent Trial and Appeal Board which applied the estoppel provisions of 37 C.F.R. § 42.73(d)(3)(i) to patent claims in an inter partes reexamination proceeding. That rule prohibits a patent owner from taking action inconsistent with the adverse judgment in various proceedings, including IPR proceedings. SoftView’s patent in this case was a heavily litigated one that had been subject to multiple IPR as well as reexamination proceedings. The latter had been stayed until after the IPR proceedings were concluded. During the IPR proceedings, most claims were canceled. In the reexamination proceedings, amended claims were pursued by combining elements of the canceled claims. The Board had rejected the claims, pursuant to Section 42.73(d)(3)(i). On appeal, the Federal Circuit affirmed that the rule had been properly promulgated and it applied to amended claims in reexamination proceedings. The Court held that it did not apply to issued claims.
The opinion can be found here.
By Nika Aldrich
