Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc., 2018-1836
| Decision Date | 23 May 2019 |
| Docket Number | 2018-1840,2018-1837,2018-1838,2018-1836 |
| Parties | WIRELESS PROTOCOL INNOVATIONS, INC., Appellant v. TCT MOBILE, INC., TCT MOBILE (US) INC., Appellees |
| Court | U.S. Court of Appeals — Federal Circuit |
NOTE: This disposition is nonprecedential.
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-01494, IPR2016-01704, IPR2016-01861, IPR2016-01865.
KAYVAN B. NOROOZI, Noroozi PC, Santa Monica, CA, argued for appellant. Also represented by ROBERT H. SLOSS, Procopio, Cory, Hargreaves and Savitch LLP, Palo Alto, CA.
WILLIAM R. PETERSON, Morgan, Lewis & Bockius LLP, Houston, TX, argued for appellees. Also represented by JULIE S. GOLDEMBERG, Philadelphia, PA; BRADFORD CANGRO, JEREMY DEANE PETERSON, Washington, DC.
Before TARANTO, SCHALL, and CHEN, Circuit Judges.
Wireless Protocol Innovations, Inc. (WPI) owns U.S. Patent Nos. 8,274,991, 8,565,256, and 9,125,051. All three patents share a specification and claim methods involving point-to-multipoint communication systems, as well as the systems themselves. Between July and September 2016, TCT Mobile, Inc. and TCT Mobile (US) Inc. (together, TCT) filed four petitions for inter partes reviews (IPRs) of various claims of the '991, '256, and '051 patents—one each for the '991 and '256 patents, and two for the '051 patent—with the Patent and Trademark Office (PTO) under 35 U.S.C. §§ 311-319. The PTO's Patent Trial and Appeal Board, acting on behalf of the PTO's Director, see 37 C.F.R. §§ 42.4, 42.108, instituted reviews of all challenged claims in all four petitions under 35 U.S.C. § 314.
In February and March 2018, the Board issued final written decisions in all four IPRs under 35 U.S.C. § 318, concluding that all challenged claims are unpatentable. For the '991 patent, the Board held claims 1 and 3-5 unpatentable for obviousness under 35 U.S.C. § 103 on two independent grounds. For the '256 patent, the Board held claims 1, 4, and 7 unpatentable for anticipation under 35 U.S.C. § 102 and also for obviousness. For the '051 patent, the Board held claims 1, 2, 4-7, 9-12, 14-19, 21-23, 25, and 26 similarly unpatentable for obviousness.
WPI appeals all four Board decisions. For the '991 patent, we reverse the Board's decision on the first obviousness ground because the combination of asserted prior-art references does not disclose every element of the challenged claims. We vacate and remand the Board's decision on the second obviousness ground because the Board applied a claim construction that contradicts explicit teachings in the '991 patent. As to the Board's decisions for the '256 and '051 patents, we see no error and therefore affirm the unpatentability rulings as to those patents.
The '991, '256, and '051 patents are all titled "Protocol for Allocating Upstream Slots over a Link in a Point-to-Multipoint Communication System." The shared specification, describing a base station controller (BSC) and multiple customer premises equipment (CPE) devices that can communicate with it, identifies three "states" a CPE can be in with regard to slots made available for that communication: (1) a "grant pending" state, (2) a "grant pending absent" state, and (3) an "idle" state. '991 patent, col. 2, lines 23-41.1 In the grant pending state, the CPE transmits data upstream after the BSC has granted it a data slot. Id., col. 2, lines 37-41. Using a process called "piggybacking," the CPE can continue sending upstream data in that state until it has no more data to send. Id., col. 2, lines 42-47. The other states are two different states in which the CPE may seek slots for sending data upstream, i.e., states from which the CPE may transition into the grant pending state. In the grant pending absent state, the CPE "sends no upstream data to the [BSC]," but it can request a data slot for that purpose without contending for slots with other CPEs (a process called "contention"). Id., col. 2, line 66 through col. 3, line 3. The CPE makes the request by responding to a periodic "unicast" communication from the BSC. Id., col. 2, lines 15-22. In the idle state, the CPE must go through contention to receive a data-transmission slot; the CPE enters the idle state after it runs out of data to send upstream and a specified time elapses. See id., col. 2, lines 30-32.
Claim 1 of the '991 patent reads:
Id., col. 11, line 39 through col. 12, line 26 (emphases added). Claims 3-5 directly or indirectly depend on claim 1, id., col. 12, lines 31-40, but WPI makes no patentability arguments for those claims separate from its arguments for claim 1. We do not quote claims from the '256 and '051 patents.
In October 2015, WPI sued TCT, along with other firms not involved in this appeal, for infringement of the '991, '256, and '051 patents. TCT responded by filing the four IPR petitions.
In IPR2016-01494, the Board instituted a review of claims 1 and 3-5 of the '991 patent on two independent grounds: (1) obviousness over International Patent Pub. No. WO 99/61993 (Abi-Nassif) and Data-Over-Cable Service Interface Specifications, Radio Frequency Interface Specification, Second Interim Release (DOCSIS 1.1) and (2) obviousness over U.S. Patent No. 6,466,544 (Sen), U.S. Patent No. 6,665,307 (Rydnell), and admitted prior art. In its final written decision, the Board construed the phrase "transitioning operation of the CPE from the grant pending absent state to the grant pending state after a subsequent bandwidth grant is received at the CPE" to mean that the transition between states occurs "subsequent to and in consequence of a subsequent bandwidth grant." TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., No. IPR2016-01494, 2018 WL 914699, at *4 (P.T.A.B. Feb. 13, 2018) ('991 Decision). For the first ground, the Board determined that Abi-Nassif and DOCSIS 1.1 disclose all elements of claims 1 and 3-5 and that those references render those claims unpatentable for obviousness. Id. at *6-11. For the second ground, the Board determined that Sen alone discloses all elements of those claims and renders them unpatentable for obviousness, id. at *11-15, and the Board therefore did not rely on Rydnell or admitted prior art, see id.
In IPR2016-01704, the Board instituted a review of claims 1, 4, and 7 of the '256 patent on two grounds: (1) anticipation by DOCSIS 1.1 and (2) obviousness over Abi- Nassif and DOCSIS 1.1. In its final written decision, the Board adopted WPI's proposed construction of the term "idle state" to mean "a state in which the CPE awaits arrival of data packets to send as upstream data to the BSC." TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., No. IPR2016-01704, 2018 WL 1150496, at *3 (P.T.A.B. Mar. 2, 2018). On the first ground, the Board determined that DOCSIS 1.1 anticipates claims 1, 4, and 7. Id. at *4-7. On the second ground, the Board determined that Abi-Nassif and DOCSIS 1.1 render those claims unpatentable for obviousness. Id. at *7-9.
In IPR2016-01861, the Board instituted a review of claims 1, 2, 4, 5, 21-23, 25, and 26 of the '051 patent for obviousness over Abi-Nassif, DOCSIS 1.1, and admitted prior art. In its final written decision, the Board again adopted WPI's same construction of "idle state" and determined that all challenged claims are unpatentable for obviousness. TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., No. IPR2016-01861, 2018 WL 1472580, at *4, *6-11 (P.T.A.B. Mar. 22, 2018). In related IPR2016-01865, the Board instituted a review of claims 6, 7, 9-12, and 14-19 of the '051 patent on essentially the same obviousness ground, but without considering any admitted prior art. In its final written decision, the Board determined that those claims are unpatentable for largely the same reasons. See TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., No. IPR2016-01865, 2018 WL 1474509, at *4-9 (P.T.A.B. Mar. 22, 2018).
WPI timely appealed all four Board decisions to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Under the applicable version of the statutory provision,2 an inventor is not entitled to a patent "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a) (2006). At least the following factual determinations inform this inquiry: (1) "the scope and content of the prior art"; (2) "differences between the prior art and the claims at issue"; (3) "the...
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