Case: 23-1497 Document: 92 Page: 1 Filed: 02/03/2025
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
TELIT CINTERION DEUTSCHLAND GMBH, FDBA THALES DIS AIS DEUTSCHLAND GMBH, HONEYWELL INTERNATIONAL INC., SIERRA WIRELESS, ULC, FKA SIERRA WIRELESS, INC., Appellants
v.
3G LICENSING, S.A., Appellee ______________________
2023-1497, 2023-1498, 2023-1499 ______________________
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 00906. ______________________
Decided: February 3, 2025 ______________________
GUY YONAY, Pearl Cohen Zedek Latzer Baratz LLP, New York, NY, argued for all appellants. Appellant Telit Cinterion Deutschland GmbH also represented by KYLE AUTERI, I.
ALAN WRIGHT, Devlin Law Firm LLC, Wilmington, DE, argued for appellee. Also represented by TIMOTHY DEVLIN, Case: 23-1497 Document: 92 Page: 2 Filed: 02/03/2025
2 TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A.
ROBERT J. GAJARSA, NADIIA LOIZIDES.
JEFFREY R. GARGANO, K&L Gates LLP, Chicago, IL, for appellant Honeywell International Inc. Also represented by BRIAN PAUL BOZZO, Pittsburgh, PA; ERIK HALVERSON, San Francisco, CA.
AMANDA TESSAR, Perkins Coie LLP, Denver, CO, for ap- pellant Sierra Wireless, ULC. Also represented by DANIEL TYLER KEESE, Portland, OR. ______________________
Before MOORE, Chief Judge, LOURIE and STARK, Circuit Judges. MOORE, Chief Judge. Telit Cinterion Deutschland GmbH, f/d/b/a/ Thales Dis Ais Deutschland GmbH, Honeywell International Inc., Si- erra Wireless Inc., TCL Communication Technology Hold- ings Limited, TCT Mobile International Limited, TCT Mobile, Inc., TCT Mobile (US) Inc., and TCT Mobile (US) Holdings, Inc. (collectively, Telit) appeal a final written de- cision from the Patent Trial and Appeal Board (Board) de- termining Telit did not establish unpatentability of substitute claims 66–85 of U.S. Patent No. 7,580,388. We vacate and remand the Board’s decision with regard to claims 69 and 77, and their dependent claims, but other- wise affirm. BACKGROUND The ’388 patent is directed to “a method and apparatus for providing new configurations for transmitting control information between a mobile terminal, for example user equipment (UE), and a radio network controller (RNC) us- ing a common control channel (CCCH) logical chan- nel/transport channel.” ’388 patent at 1:19–24. The ’388 patent purports to allow UEs to send larger messages than previously possible with the universal mobile Case: 23-1497 Document: 92 Page: 3 Filed: 02/03/2025
TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A. 3
telecommunications system (UMTS) while maintaining in- teroperability with legacy systems. The ’388 patent does this by adding an extension to the initial broadcast mes- sage from the RNC, which is visible to newer UEs that sup- port larger transport block sizes but is invisible to legacy UEs to avoid impacting existing systems. Id. at 9:34–44. Telit petitioned for inter partes review, challenging claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 of the ’388 patent on five grounds: (1) anticipation by TS-25.331, 1 (2) obviousness based on TS-25.331 alone, (3) obviousness based on TS-25.331 in combination with Ban- nister, 2 (3) obviousness based on U.S. Patent No. 7,333,443 (Beckmann) in combination with TS-25.331, and (5) obvi- ousness based on Beckmann in view of TS-25.331 and Ban- nister. J.A. 295. The Board instituted review on all grounds. J.A. 538. 3G filed a motion to amend (MTA) and proposed substitute claims 66–85. J.A. 621–53. After the Board’s Preliminary Guidance, J.A. A844–65, 3G submit- ted a revised motion to amend (RMTA), J.A. 913–61. The Board issued a final written decision determining all challenged, original claims of the ’388 patent were un- patentable. J.A. 1–60. Specifically, the Board found claims 1–3, 8, 9, 12, 56, and 57 were anticipated by TS-25.331 and all challenged claims would have been obvious over TS- 25.331. J.A. 59. The Board granted 3G’s RMTA, finding 3G showed the proposed substitute claims met the require- ments of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, and Telit did not prove by a preponderance of the evidence the proposed substitute claims were unpatentable over the
1 Telecommunications System (UMTS); Radio Re- source Control (RRC) protocol specification (V6.1.0); J.A. 2260–365. 2 JEFFREY BANNISTER ET AL., CONVERGENCE TECHNOLOGIES FOR 3G NETWORKS, IP, UMTS, EGPRS AND ATM Ch. 6 (2004); J.A. 2401–16, 2491–500. Case: 23-1497 Document: 92 Page: 4 Filed: 02/03/2025
4 TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A.
prior art. J.A. 60–85. Telit appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION “[W]e will set aside Board actions that are arbitrary, capricious, an abuse of discretion, or otherwise not in ac- cordance with law, and factual findings that are unsup- ported by substantial evidence.” Sisvel Int’l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1238 (Fed. Cir. 2023). Satis- fying the written description requirement is a question of fact reviewed for substantial evidence. ULF Bamberg v. Dalvey, 815 F.3d 793, 797 (Fed. Cir. 2016). Obviousness is a question of law reviewed de novo, with underlying factual findings reviewed for substantial evidence. HTC Corp. v. Cellular Commc’ns Equip., LLC, 877 F.3d 1361, 1369 (Fed. Cir. 2017). Anticipation is a question of fact reviewed for substantial evidence. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). I. Telit argues the Board’s finding that amended claims 69 and 77 have written description support lacks substan- tial evidence. Appellants’ Opening Br. 26–34. Case: 23-1497 Document: 92 Page: 5 Filed: 02/03/2025
TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A. 5
In its RMTA, 3G amended original claims 4 and 6 as follows:
J.A. 64. Substitute claim 69 is a dependent claim in a cas- cade of multiple dependent claims as follows: 3
3 For purposes of this appeal the parties treat claim 69 and 77 as substantively identical. See Appellants’ Open- ing Br. 26–33; Appellee’s Response Br. 39–45. We Case: 23-1497 Document: 92 Page: 6 Filed: 02/03/2025
6 TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A.
66. A method of transmitting control information form a mobile terminal in a network, the method comprising: receiving a first message in the mobile terminal, the first message including information indicating at least one available configuration for transmitting a second message . . . 68. The method of claim 66, wherein the at least one available configuration comprises a prede- fined configuration mode and a predefined con- figuration identity. 69. The method of claim 68, wherein the prede- fined configuration mode comprises utilizing a new message format; wherein the new message format adapts a message format by omitting data; wherein another message is transmitted using the adapted message format; wherein omitting data includes omitting START values transmitted in a message preceding another message. J.A. 925–27 (emphasis added).
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Case: 23-1497 Document: 92 Page: 1 Filed: 02/03/2025
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
TELIT CINTERION DEUTSCHLAND GMBH, FDBA THALES DIS AIS DEUTSCHLAND GMBH, HONEYWELL INTERNATIONAL INC., SIERRA WIRELESS, ULC, FKA SIERRA WIRELESS, INC., Appellants
v.
3G LICENSING, S.A., Appellee ______________________
2023-1497, 2023-1498, 2023-1499 ______________________
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 00906. ______________________
Decided: February 3, 2025 ______________________
GUY YONAY, Pearl Cohen Zedek Latzer Baratz LLP, New York, NY, argued for all appellants. Appellant Telit Cinterion Deutschland GmbH also represented by KYLE AUTERI, I.
ALAN WRIGHT, Devlin Law Firm LLC, Wilmington, DE, argued for appellee. Also represented by TIMOTHY DEVLIN, Case: 23-1497 Document: 92 Page: 2 Filed: 02/03/2025
2 TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A.
ROBERT J. GAJARSA, NADIIA LOIZIDES.
JEFFREY R. GARGANO, K&L Gates LLP, Chicago, IL, for appellant Honeywell International Inc. Also represented by BRIAN PAUL BOZZO, Pittsburgh, PA; ERIK HALVERSON, San Francisco, CA.
AMANDA TESSAR, Perkins Coie LLP, Denver, CO, for ap- pellant Sierra Wireless, ULC. Also represented by DANIEL TYLER KEESE, Portland, OR. ______________________
Before MOORE, Chief Judge, LOURIE and STARK, Circuit Judges. MOORE, Chief Judge. Telit Cinterion Deutschland GmbH, f/d/b/a/ Thales Dis Ais Deutschland GmbH, Honeywell International Inc., Si- erra Wireless Inc., TCL Communication Technology Hold- ings Limited, TCT Mobile International Limited, TCT Mobile, Inc., TCT Mobile (US) Inc., and TCT Mobile (US) Holdings, Inc. (collectively, Telit) appeal a final written de- cision from the Patent Trial and Appeal Board (Board) de- termining Telit did not establish unpatentability of substitute claims 66–85 of U.S. Patent No. 7,580,388. We vacate and remand the Board’s decision with regard to claims 69 and 77, and their dependent claims, but other- wise affirm. BACKGROUND The ’388 patent is directed to “a method and apparatus for providing new configurations for transmitting control information between a mobile terminal, for example user equipment (UE), and a radio network controller (RNC) us- ing a common control channel (CCCH) logical chan- nel/transport channel.” ’388 patent at 1:19–24. The ’388 patent purports to allow UEs to send larger messages than previously possible with the universal mobile Case: 23-1497 Document: 92 Page: 3 Filed: 02/03/2025
TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A. 3
telecommunications system (UMTS) while maintaining in- teroperability with legacy systems. The ’388 patent does this by adding an extension to the initial broadcast mes- sage from the RNC, which is visible to newer UEs that sup- port larger transport block sizes but is invisible to legacy UEs to avoid impacting existing systems. Id. at 9:34–44. Telit petitioned for inter partes review, challenging claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 of the ’388 patent on five grounds: (1) anticipation by TS-25.331, 1 (2) obviousness based on TS-25.331 alone, (3) obviousness based on TS-25.331 in combination with Ban- nister, 2 (3) obviousness based on U.S. Patent No. 7,333,443 (Beckmann) in combination with TS-25.331, and (5) obvi- ousness based on Beckmann in view of TS-25.331 and Ban- nister. J.A. 295. The Board instituted review on all grounds. J.A. 538. 3G filed a motion to amend (MTA) and proposed substitute claims 66–85. J.A. 621–53. After the Board’s Preliminary Guidance, J.A. A844–65, 3G submit- ted a revised motion to amend (RMTA), J.A. 913–61. The Board issued a final written decision determining all challenged, original claims of the ’388 patent were un- patentable. J.A. 1–60. Specifically, the Board found claims 1–3, 8, 9, 12, 56, and 57 were anticipated by TS-25.331 and all challenged claims would have been obvious over TS- 25.331. J.A. 59. The Board granted 3G’s RMTA, finding 3G showed the proposed substitute claims met the require- ments of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, and Telit did not prove by a preponderance of the evidence the proposed substitute claims were unpatentable over the
1 Telecommunications System (UMTS); Radio Re- source Control (RRC) protocol specification (V6.1.0); J.A. 2260–365. 2 JEFFREY BANNISTER ET AL., CONVERGENCE TECHNOLOGIES FOR 3G NETWORKS, IP, UMTS, EGPRS AND ATM Ch. 6 (2004); J.A. 2401–16, 2491–500. Case: 23-1497 Document: 92 Page: 4 Filed: 02/03/2025
4 TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A.
prior art. J.A. 60–85. Telit appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION “[W]e will set aside Board actions that are arbitrary, capricious, an abuse of discretion, or otherwise not in ac- cordance with law, and factual findings that are unsup- ported by substantial evidence.” Sisvel Int’l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1238 (Fed. Cir. 2023). Satis- fying the written description requirement is a question of fact reviewed for substantial evidence. ULF Bamberg v. Dalvey, 815 F.3d 793, 797 (Fed. Cir. 2016). Obviousness is a question of law reviewed de novo, with underlying factual findings reviewed for substantial evidence. HTC Corp. v. Cellular Commc’ns Equip., LLC, 877 F.3d 1361, 1369 (Fed. Cir. 2017). Anticipation is a question of fact reviewed for substantial evidence. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). I. Telit argues the Board’s finding that amended claims 69 and 77 have written description support lacks substan- tial evidence. Appellants’ Opening Br. 26–34. Case: 23-1497 Document: 92 Page: 5 Filed: 02/03/2025
TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A. 5
In its RMTA, 3G amended original claims 4 and 6 as follows:
J.A. 64. Substitute claim 69 is a dependent claim in a cas- cade of multiple dependent claims as follows: 3
3 For purposes of this appeal the parties treat claim 69 and 77 as substantively identical. See Appellants’ Open- ing Br. 26–33; Appellee’s Response Br. 39–45. We Case: 23-1497 Document: 92 Page: 6 Filed: 02/03/2025
6 TELIT CINTERION DEUTSCHLAND GMBH v. 3G LICENSING, S.A.
66. A method of transmitting control information form a mobile terminal in a network, the method comprising: receiving a first message in the mobile terminal, the first message including information indicating at least one available configuration for transmitting a second message . . . 68. The method of claim 66, wherein the at least one available configuration comprises a prede- fined configuration mode and a predefined con- figuration identity. 69. The method of claim 68, wherein the prede- fined configuration mode comprises utilizing a new message format; wherein the new message format adapts a message format by omitting data; wherein another message is transmitted using the adapted message format; wherein omitting data includes omitting START values transmitted in a message preceding another message. J.A. 925–27 (emphasis added). Thus, four messages are re- quired by the claim cascade: (1) “a first message” (message A), (2) “a second message” (message B), (3) “another mes- sage” (message D), and (4) “a message preceding another message” (message C). The Board found proposed substitute claim 69 had written description support in Application 11/065,872, which issued as the ’388 patent, and in Provisional Appli- cations 60/576,214 and 60/589,630. J.A. 69. Specifically, the Board found support for the claim in the fourth
therefore cite only to claim 69, but recognize all arguments also apply to claim 77. Case: 23-1497 Document: 92 Page: 7 Filed: 02/03/2025
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embodiment described and Figure 15 of the ’388 patent. J.A. 69–70 (citing J.A. 2228 ¶ 128 and ’388 patent at 12:15– 18). Critical to this appeal, the Board found it was not nec- essary for message A to be first in time, and it was there- fore not necessary for messages A and B to precede messages C and D. J.A. 73. While there is a presumption that steps of a method claim are not required to occur in the order they are listed, that presumption can be overcome when “logic or gram- mar[] requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Mformation Techs., Inc. v. Rsch. in Mo- tion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (internal quotation marks omitted). Telit argues that the Board erred by not requiring that the steps be performed in order. We agree. The language of claim 69 requires messages A and B come before mes- sages C and D. Claim 69 recites “wherein the predefined configuration mode comprises utilizing a new message format.” J.A. 927. That predefined configuration format must be in use before the new message format can be utilized. The new message format is able to send a message omitting START values (message D) because the START values were in a preceding message (message C). The “predefined configuration mode” has an antecedent basis in claim 68, from which claim 69 depends. Claim 68 requires the “predefined con- figuration mode” to come from “the at least one available configuration.” Id. at 926. And the “at least one available configuration,” has an antecedent basis in claim 66, which requires the “first message,” message A, “include[] infor- mation indicating at least one available configuration mode for transmitting a second message.” Id. at 925–26. The claims thus require at least message A to precede mes- sages C and D, and the Board’s finding otherwise is not supported by substantial evidence. The Board erred in not Case: 23-1497 Document: 92 Page: 8 Filed: 02/03/2025
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requiring this ordering of steps. We therefore vacate the Board’s determination regarding claims 69 and 77, and their dependent claims, and remand for the Board to deter- mine patentability in the first instance in light of our de- termination that the claims require that messages A and B precede messages C and D. CONCLUSION We have considered the parties’ remaining arguments on appeal and find them unpersuasive. We therefore af- firm-in-part, vacate-in-part, and remand for further pro- ceedings. AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED COSTS Each side shall bear their own costs.