Tuesday, January 19, 2021

Judge Newman makes procedural points in analyzing Hytera, an appeal of IPR2018- 00176. _

Some procedural points from the case:

In its Reply filed in the PTAB, Hytera elaborated its argument concerning Stubbs, stating that Stubbs discloses the use of incompatible protocols as “exemplified by the encapsulation/decapsulation conversions in the GGSN and SGSN.” Reply at 18. Hytera’s Reply cited additional quotations from the Stubbs reference, that “flowed directly from its contention [in the Petition] that converters evidence incompatible protocols.” Hytera Br. 51. The Board declined to consider this information, calling it “new argument advanced in the Reply” without any reason “why this argument could not have been made in the Petition.” Board Op. at *11–12. It was error for the Board to refuse to consider information filed in Reply, although it was relevant to Motorola’s Response, for the Board is intended and expected fully to explore the issues, to justify the estoppel that Congress included in the America Invents Act. In the interest of expediency, we have reviewed the information that the Board refused to consider. We conclude that this information does not change the result. The question of “waiver” Hytera argues that the Board adopted an argument that had been waived by Motorola: the argument that the inter-ward interface of Grube “refers merely to a connection between ward controllers” and thus does not function as a group controller. Hytera Br. 53–54.

Hytera acknowledges that this argument was presented by Motorola in its preliminary response, but Hytera states that Motorola did not develop the argument, and therefore that it could not be relied on by the Board. We do not discern error or inequity on the facts hereof, for the issue was initially mentioned by Motorola, and the record does not show that as to this aspect Hytera was foreclosed from stating its position.


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