The Federal Circuit affirmed in part, reversed-in-part and remanded-in-part the Board’s decision in the inter partes review of U.S. Patent No. 8,265,096 (the “’096 patent”), and affirmed the Board’s decision as to the cross appeal by UNMRI.

The ‘096 UNMRI patent, entitled  “Method for Constructing Frame Structures,” relates to technology for digital transmission of information in sub-channels through construction of  specialized orthogonal frequency-division access (ODFMA) systems to organize information transmitted across time and frequency. The benefit of this type of system is to allow multiple users to transmit data without interference from other users, using a two-tier frame structure for higher and lower mobility users (i.e. supporting faster and slower wireless broadband speeds).

During the IPR, the Board found all the ‘096 claims unpatentable as obvious, besides claim 8.  UNMRI filed a contingent motion to substitute the unpatentable claims, and requested “preliminary guidance” from the Board under the AIA’s MTA Pilot Program as to whether the motion met statutory and regulatory requirements.   The Board granted UNMRI’s motion, and allowed the substitute claims. Zyxel opposed, arguing deficiencies in written description support. While the Board agreed with this deficiency, it allowed UNMRI to cure the issues in a reply brief. The Board ultimately found the substituted claims non-obvious.

Zyxel appealed both the finding that claim 8 was nonobvious, and the decision to grant UNMRI’s motion to amend. The Federal Circuit reversed the decision for claim 8, determining that it was obvious. The Court affirmed the grant of UNMRI’s motion to amend, despite valid procedural issues raised by Zyxel, stating that the “core purpose of the MTA Pilot Program is to allow for the correction of errors in the original motion”  and by introducing the option for patent owners to receive preliminary guidance from the Board with respect to motions to amend, the “parties can respond and address any errors.“  The Court stated that even if the Board had erred in permitting UNMRI to fix errors in the supplementing written description report, it would be “harmless error” that did not prejudice Zyxel. The Court remanded to the Board to determine if the substitute claims are unpatentable as obvious based on the Court’s affirmation that claims 1-4 and 6-8  are obvious (since the substitute claims are combinations of those claims), under a theory of collateral estoppel.

The Court in Zyxel Communications held that the purpose of the MTA Pilot Program, to allow patent owners an opportunity to receive guidance from the Board regarding potential amendments and enable them to proactively address errors, overrides any potential minor violations of the procedural regulations in the motion filings, absent any prejudice to the Petitioner.

Takeaway: While the Board allowed the patent owner to remedy procedural errors in the original motion in Zyxel Communications through the filing of a reply brief, future panels might not be as generous. Therefore, in seeking this guidance through the MTA Pilot Program, patent owners would be well-advised to pay attention to all regulatory requirements to ensure a successful grant of a motion to amend.