Mixed result in IPR v. ZTE

Of interest in the ZTE case:


Our
review under the APA is subject to a harmless-error rule
by virtue of the directive of 5 U.S.C. § 706 that “due
account shall be taken of the rule of prejudicial error.”
See Shinseki v. Sanders, 556 U.S. 396, 406, 409 (2009)
(explaining that § 706 requires the party challenging an
agency decision on appeal to demonstrate the harmfulness
of the asserted error). Here, we need not decide
whether ZTE’s position on reply was a shift or a clarification
because IPRL has not shown that it suffered harm
from the process it challenges.



As to claim 8:



The Board then seemed to hold that claim 8 would
have been obvious because “Jawanda explicitly states that
the wireless data connections could be provided by a code
division multiple access (CDMA) network.” Id. at *18
(quoting Pet’r’s Reply 13) (internal quotation marks
omitted). The logic of the Board’s analysis is wanting.
As noted, the Board found earlier that Jawanda did
not disclose “maintain[ing] a communication session” at
all: the Board relied wholly on the GPRS standard for
that limitation. Moreover, the Board cited no prior-art
reference that discloses that CDMA networks at the time
of the invention could “maintain a communication session”
according to the claims. Accordingly, the Board
must have held that it would have been obvious to combine
the PDP Context feature of the GPRS standard that
enables the subscriber unit to “maintain a communication
session” with a CDMA network. We do not see the support
for that inference.

(...)

While that testimony may
establish that, at some point, there was a reason to combine
the PDP Context feature with CDMA protocols, it
does not provide that reason or show why the references
cited or the knowledge of one of skill in the art at the time
of the invention would motivate a skilled artisan to alter
the standards with a reasonable expectation of success.
Nor does Dr. Stark’s testimony establish that, at the time
of the invention, the CDMA standard already included the
“maintain a communication session” limitation.