`571-272-7822
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`Paper 54
`Entered: July 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00525
`Patent 8,380,244 B2
`____________
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`I. INTRODUCTION
`A final decision was entered in this proceeding on September 14,
`2014, in which we determined that Petitioner had proven, by a
`preponderance of the evidence, that claims 1–8, 14–16, 19–29, 36–38, and
`41–44 of the ’244 patent were unpatentable. Paper 48. The final decision
`was appealed by Patent Owner to the United States Court of Appeals for the
`Federal Circuit. On April 20, 2017, the Federal Circuit affirmed with
`respect to all claims, but vacated our finding of obviousness of claim 8,
`which depends from claim 1, and remanded for further consideration. IPR
`Licensing, Inc. v. ZTE Corp., ZTE (USA) Inc., Microsoft Corp., Nos. 2016-
`1374, 2016-1443 (Fed. Cir. Apr. 20, 2017).1 In particular, the Federal
`Circuit agreed with our claim construction for the claim 1 phrase
`“maintain[ing] a communication session,” but held that “substantial
`evidence does not support the Board’s articulated motivation to combine the
`asserted references to arrive at the invention defined in claim 8.” Id. at 3.
`The Board held a conference call on July 18, 2017, among
`representatives for Petitioner, Patent Owner, and Judges Medley, Quinn, and
`Bunting to discuss potential actions to be taken in view of the remand by the
`Federal Circuit. A court reporter was present on the call, and a transcript of
`the call is to be filed in due course by Patent Owner as an exhibit.
`Both Petitioner and Patent Owner agree that the narrow issue to be
`addressed regarding claim 8 is the motivation to combine the PDP Context
`feature of the GPRS standards that enables the subscriber unit to “maintain a
`communication session” with a CDMA network. Id. at 11–13. In addition,
`
`1 The motion of joined Petitioner Microsoft Corporation, requesting
`termination of its participation in this proceeding, was granted May 23,
`2017. Paper 53.
`
`
`
`2
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`both parties agree that additional briefing beyond the arguments and
`evidence presently in the current record is unnecessary.
`We authorized Petitioner to file a three (3) page paper, which is due
`no later than August 1, 2017. This paper is limited to a numeric listing of
`citations to the previously existing record, indicating where the evidence was
`originally introduced or argued in the Petition, concerning the motivation to
`combine the PDP Context feature of the GPRS standard that enables the
`subscriber unit to “maintain a communication session” with a CDMA
`network as recited in claim 8. While the paper may include a short
`introductory paragraph, it is not to include any discussion or argument.
`Quotes from the brief are permitted, for example:
`1. “There is a strong motivation to combine Jawanda with the IEEE
`802.11 Standard and the GPRS Standards.” Paper 1, 25.
`Patent Owner is not authorized to file a response at this time, but
`should request authorization via a brief and non-argumentative email to
`trials@uspto.gov after reviewing Petitioner’s filing, should it feel
`observations are necessary.
`
`
`II. ORDER
`In consideration of the foregoing, it is
`
`ORDERED that Petitioner is authorized to file a three (3) page paper
`
`no later than August 1, 2017, limited to a listing indicating citations to the
`Petition indicating evidence directed to the motivation to combine the PDP
`Context feature of the GPRS standard that enables the subscriber unit to
`“maintain a communication session” with a CDMA network; and
`
`
`
`
`3
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`FURTHER ORDERED that Patent Owner is not authorized to file
`
`observations at this time, and may contact the Board should it feel
`observations are necessary.
`
`
`PETITIONER:
`Charles M. McMahon
`Brian A. Jones
`BRINKS GILSON & LIONE
`bjones@brinksgilson.com
`cmcmahon@brinksgilson.com
`
`
`PATENT OWNER:
`Jonathan D. Link
`Julie M. Holloway
`LATHAM & WATKINS LLP
`julie.holloway@lw.com
`jonathan.link@lw.com
`
`
`
`
`4
`
`
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