Wireless Protocol Innovations v. Tct Mobile, Inc.

Opinion

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

WIRELESS PROTOCOL INNOVATIONS, INC., Appellant

v.

TCT MOBILE, INC., TCT MOBILE (US) INC., Appellees ______________________

2018-1836, 2018-1837, 2018-1838, 2018-1840 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016- 01494, IPR2016-01704, IPR2016-01861, IPR2016-01865. ______________________

Decided: May 23, 2019 ______________________

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. ______________________ 2 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC.

Before TARANTO, SCHALL, and CHEN, Circuit Judges. TARANTO, Circuit Judge. 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 vari- ous claims of the ʼ991, ʼ256, and ʼ051 patents—one each for the ʼ991 and ʼ256 patents, and two for the ʼ051 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 ʼ991 patent, the Board held claims 1 and 3–5 un- patentable for obviousness under 35 U.S.C. § 103 on two independent grounds. For the ʼ256 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 ʼ991 pa- tent, we reverse the Board’s decision on the first obvious- ness ground because the combination of asserted prior-art references does not disclose every element of the chal- lenged claims. We vacate and remand the Board’s decision on the second obviousness ground because the Board ap- plied a claim construction that contradicts explicit teach- ings in the ʼ991 patent. As to the Board’s decisions for the WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC. 3

ʼ256 and ʼ051 patents, we see no error and therefore affirm the unpatentability rulings as to those patents. I A The ʼ991, ʼ256, and ʼ051 patents are all titled “Protocol for Allocating Upstream Slots over a Link in a Point-to- Multipoint Communication System.” The shared specifica- tion, describing a base station controller (BSC) and multi- ple 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 communica- tion: (1) a “grant pending” state, (2) a “grant pending ab- sent” state, and (3) an “idle” state. ʼ991 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 up- stream 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 en- ters the idle state after it runs out of data to send upstream and a specified time elapses. See id., col. 2, lines 30–32.

1 Because the patents share a specification, for sim- plicity we cite only the ʼ991 patent. 4 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC.

Claim 1 of the ʼ991 patent reads: 1. A method for obtaining uplink (UL) transmis- sion bandwidth in a point-to-multipoint communi- cation system, where a customer premises equipment (CPE) is communicating with a base station controller (BSC) over a link shared with other CPEs, comprising the steps of: operating the CPE in a grant pending state wherein the CPE awaits receipt of a bandwidth grant from the BSC, receives the bandwidth grant, transmits data to the BSC using the granted band- width, transmits further bandwidth requests using the granted bandwidth and transitioning from the grant pending state to a grant pending absent state once the CPE has transmitted upstream data to the BSC within a bandwidth specified by the band- width grant received from the BSC during the grant pending state and the CPE has no pending bandwidth requests; operating the CPE in the grant pending absent state awaiting arrival of data for transmission to the BSC and transmitting a first type bandwidth re- quest to the BSC without entering into contention when the CPE receives data for transmission; 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; and transitioning operation of the CPE from the grant pending absent state to an idle state if the CPE does not transmit any first type bandwidth request to the BSC during a timeout period. 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 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC. 5

arguments for those claims separate from its arguments for claim 1. We do not quote claims from the ’256 and ’051 patents. B In October 2015, WPI sued TCT, along with other firms not involved in this appeal, for infringement of the ʼ991, ʼ256, and ʼ051 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 ʼ991 patent on two independent grounds: (1) obviousness over International Patent Pub. No. WO 99/61993 (Abi-Nassif) and Data-Over-Cable Ser- vice 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. Pa- tent 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 con- sequence 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) (ʼ991 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 dis- closes all elements of those claims and renders them un- patentable 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 ʼ256 patent on two grounds: (1) anticipation by DOCSIS 1.1 and (2) obviousness over Abi- 6 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC.

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 arri- val 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 ob- viousness. 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 ʼ051 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 deter- mined that all challenged claims are unpatentable for ob- viousness. 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 ʼ051 patent on essentially the same obvi- ousness ground, but without considering any admitted prior art. In its final written decision, the Board deter- mined 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). WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC. 7

II Under the applicable version of the statutory provi- sion, 2 an inventor is not entitled to a patent “if the differ- ences 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 in- form this inquiry: (1) “the scope and content of the prior art”; (2) “differences between the prior art and the claims at issue”; (3) “the level of ordinary skill in the pertinent art”; and (4) “[s]uch secondary considerations as commer- cial success, long felt but unsolved needs, failure of others, etc.” Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). As the Supreme Court has explained, we ap- ply “an expansive and flexible approach” to obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–16 (2007). There was no dispute before the Board that, on the ob- viousness grounds advanced in the petitions, TCT had the “burden to prove that all claimed limitations are disclosed in the prior art.” Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014). We review the Board’s ultimate obviousness determination de novo, but we review its underlying factual findings—including its reading of what the prior art discloses—for substantial evidence. Ow- ens Corning v. Fast Felt Corp., 873 F.3d 896, 902 (Fed. Cir. 2017).

2 The patents at issue have effective filing dates be- fore the relevant effective date of changes made by the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112- 29, 125 Stat. 284 (2011), to 35 U.S.C. §§ 102 and 103. We apply the pre-AIA version of those provisions. 8 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC.

A We first address the Board’s ruling that the combina- tion of Abi-Nassif and DOCSIS 1.1 renders the ʼ991 claims at issue unpatentable for obviousness. WPI argues, among other things, that the combination of those two references is insufficient to prove obviousness of claims 1 and 3–5 be- cause the combination does not disclose every limitation re- quired by those claims. We agree with WPI. The first of the two “transitioning” clauses of claim 1 clearly requires that the CPE transition from the grant pending absent state to the grant pending state only after the BSC grants bandwidth to the CPE. ʼ991 patent, col. 12, lines 15–22. In its petition, TCT asserted that the grant pending absent state and the grant pending state in the ʼ991 patent correspond, respectively, to an “inactive” state and an “active” state disclosed in Abi-Nassif. E.g., J.A. 209. Agreeing with TCT, the Board found that Abi-Nassif dis- closes a transition between its active and inactive states at the time required by the ʼ991 claims. ʼ991 Decision at *9. But we cannot find substantial evidence in the record to support the Board’s finding. Abi-Nassif teaches that the transition between its in- active and active states occurs before the CPE receives a slot for sending upstream data: “When the [Medium Access Control, or MAC] User receives data to be transmitted, the MAC User transitions into the ACTIVE state upon receiv- ing a contention-free opportunity to transmit a request, provided it is not required to contend for upstream band- width, as in the case of unicast polling.” J.A. 1312. If Abi- Nassif’s MAC user transitions between states at the first opportunity to send a request for a data slot, then it can no longer be in the required state (grant pending absent state) by the time it receives the bandwidth grant. WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC. 9

In making its contrary finding, the Board relied on Fig- ure 9 from Abi-Nassif:

J.A. 1328. The Board credited TCT’s argument that, “while not expressly shown in Abi-Nassif’s Figure 9, the Figure implies by REQUEST SATISFIED that the MAC user re- ceives a bandwidth grant before sending data in the ACTIVE state.” ʼ991 Decision at *9. But the Board cited no reasonable support for its reading of Figure 9. The “Re- quest Satisfied” label is associated with the arrow that points from the active state to the inactive state, i.e., it identifies something about when the active-to-inactive transition occurs. It does not address when the transition from the inactive state to the active state occurs. The Board did not rely on the “Non-Contention Re- quest” label associated with the arrow from the inactive state to the active state, and in any event that label would not support the Board’s finding. That label refers only to the “Request”—in evident contrast to the other labels in the figure, which refer to actions following requests (“satis- fied,” “denied,” or “accepted”). Given the language in the context of the entire figure, the “Non-Contention Request” label cannot reasonably be read as saying anything other than that the making of the non-contention request suffices for the transition from the inactive to the active state. 10 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC.

TCT argues that, even if Abi-Nassif does not disclose the timing of the transition between the two states re- quired by the first “transitioning” clause of claim 1 of the ’991 patent, any error in the Board’s decision is harmless because state names are merely convenient groupings of steps, and Abi-Nassif discloses the same steps as the ʼ991 claims. We reject that argument. The ʼ991 claims are built around “states” and include a limitation that specifically requires transitioning from the grant pending absent “state” to the grant pending “state” only at a particular time. See ʼ991 patent, col. 12, lines 20–22. The harmless- error argument asks us to draw conclusions about the meaning of the “state” language and its relation to the tim- ing requirement that TCT did not fairly present to the Board and that, in any event, we do not find persuasive on the record before us. We conclude, therefore, that the record does not con- tain substantial evidence that Abi-Nassif discloses the cor- rect timing for the transition between the ʼ991 patent’s grant pending absent and grant pending states. Because TCT has not identified the disclosure of this claim limita- tion in DOCSIS 1.1, we reverse the Board’s decision on the ʼ991 patent with respect to the first ground of unpatenta- bility involving Abi-Nassif and DOCSIS 1.1. B We turn to the Board’s ruling that Sen alone renders the challenged claims unpatentable for obviousness. WPI argues that the Board’s decision rests on a faulty claim con- struction of “grant pending absent state” because the Board contradicted the ʼ991 patent’s explicit teachings. More specifically, WPI argues that, contrary to the Board’s finding, the “packet standby” state disclosed in Sen is not a grant pending absent state, as required by the ʼ991 claims, because in Sen’s packet standby state some data is sent upstream, which cannot happen in the grant pending WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC. 11

absent state of the ’991 patent. We agree that the Board applied a flawed claim construction. The Board rested its determination about Sen on its conclusion that the claims “do[] not preclude the sending of any data while the CPE is in the grant pending absent state.” ʼ991 Decision at *14. That conclusion is counter to what the specification plainly teaches. The specification of the ʼ991 patent clearly and repeatedly explains that the CPE cannot send upstream data during the grant pending absent state. ʼ991 patent, col. 7, lines 24–25 (“During grant pending absent state 23, CPE 13 sends no upstream data to BSC 12.” (emphasis added)); see also id., Abstract (simi- lar); id., col. 2, lines 18–22 (similar in Summary of the In- vention). TCT argues that the “no upstream data” language in the specification describes only a preferred embodiment and is therefore not limiting. Although one instance of the “no upstream data” language appears in the Description of the Preferred Embodiment, other instances of that lan- guage appear in both the Abstract and the Summary of the Invention. The repetition of that language in sections meant to describe the overall invention, together with the uniformity of the specification on this point, makes clear that “no upstream data” is not merely a preferred embodi- ment for the grant pending absent state, but rather a re- quirement. For a phrase like “grant pending absent state” that hardly has a plain ordinary meaning, specification language of this sort has decisive significance in identifying the proper construction of the claim term. See World Class Tech. Corp. v. Ormco Corp., 769 F.3d 1120, 1124 (Fed. Cir. 2014) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1315– 16 (Fed. Cir. 2005) (en banc)). Because the Board’s ruling on the second ground for unpatentability of the ʼ991 claims rests on a mistaken con- struction, the Board’s ruling cannot stand. We vacate that portion of the Board’s decision and remand. We do not here 12 WIRELESS PROTOCOL INNOVATIONS v. TCT MOBILE, INC.

prejudge what arguments TCT has properly preserved or should now be permitted to advance or what determina- tions as to Sen, Rydnell, and admitted prior art are sup- ported by the evidence when the evidence is assessed under “grant pending absent state” as properly construed not to permit the transmission of upstream data while the CPE is in that state. III We have considered the parties’ remaining arguments but find them unpersuasive. In particular, we do not see any deficiency in the Board’s motivation-to-combine analy- sis for the ʼ256 patent. Nor do we discern any problem with the Board’s finding for the ʼ256 and ʼ051 patents that DOCSIS 1.1 discloses an idle state. Therefore, we affirm the Board’s decisions as to the ʼ256 and ʼ051 patents. For the reasons outlined above, we reverse in part and vacate in part the Board’s decision for the ʼ991 patent, and we re- mand for further proceedings consistent with this opinion. Each party shall bear its own costs. REVERSED IN PART, VACATED IN PART, AND REMANDED IN APPEAL NO. 2018-1836 AFFIRMED IN APPEAL NOS. 2018-1837, 2018-1838, AND 2018-1840