in Re: Ipr Licensing, Inc v. ZTE Corp., 685 F. App’x 933 Fed. Cir. 2017 . Im- portantly, we examined each piece…

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: IPR LICENSING, INC.,
Appellant
______________________
2018-1805
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2014-
00525, IPR2015-00074.
______________________
Decided: November 22, 2019
______________________
G ABRIEL BELL , Latham & Watkins LLP, Washington,
DC, argued for appellant. Also represented by RICHARD P.
BRESS , MAXIMILIAN A. G RANT , J ONATHAN M. STRANG; J ULIE
M. HOLLOWAY , San Francisco, CA.
______________________
Before N EWMAN, O’M ALLEY , and T ARANTO, Circuit Judges.
O’MALLEY , Circuit Judge.
This case returns to us after remand to the Patent Trial
and Appeal Board (“the Board”). In the previous appeal,
we affirmed the Board’s findings that claims 1–7, 14–16,
19–29, 36–38, and 41–44 of U.S. Patent 8,380,244 (“the
’244 patent”) were obvious based on prior art references
cited in ground one of ZTE’s petition, the only one of three
asserted grounds on which the Board instituted review.
We remanded as to claim 8, however, because we found

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IN RE: IPR LICENSING, INC. 2
insufficient record support for the Board’s determination
that claim 8 is invalid as obvious. See IPR Licensing, Inc.
v. ZTE Corp., 685 F. App’x 933 (Fed. Cir. 2017). Im-
portantly, we examined each piece of evidence cited in the
Board’s order and concluded that the evidence to which the
Board pointed failed—either individually or collectively—
to support the conclusion that there would have been a mo-
tivation to combine the relevant prior art references. Id.
Rather than reverse the Board’s judgment as to claim 8 as
unsupported, we remanded because we could not be sure
that the record was totally “devoid of any possible motiva-
tion to combine.” Id. at 940. On remand, the Board again
found claim 8 unpatentable. ZTE Corp. v. IPR Licensing,
Inc., IPR2014-00525, 2018 WL 1224736, at *1 (P.T.A.B.
Mar. 6, 2018) (the “Remand Decision”). In this appeal, Ap-
pellant IPR Licensing (“IPRL”) argues that the only addi-
tional evidence the Board cited in support of its conclusion
on remand was not part of the record before the Board. We
agree.
Because the Board’s decision remains unsupported, we
reverse the Board’s finding of invalidity as to ground one
and, because all other challenges to the Board’s final judg-
ment of invalidity are waived, we vacate that judgment.
I. BACKGROUND
A. The ’244 Patent
The ’244 patent recognizes two types of wireless net-
works. The first is a wireless local area network, which
allows a user to wirelessly connect a portable electronic de-
vice to an access point, e.g., a router, that is in turn con-
nected to a network. The second is a cellular network, in
which geographic regions are divided into “cells” that each
contain a “base station.” ’244 patent, col. 8, ll. 20–31. Us-
ers within a given cell connect their device to a cell’s base
station, which is in turn connected to a network like the
internet. Connecting to either type of network has

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IN RE: IPR LICENSING, INC. 3
tradeoffs. For example, wireless local area networks have
more limited range but they generally transmit data faster.
In addition to mentioning different types of networks,
the ’244 patent cites two relevant methods for allowing us-
ers to access the same network. Id. at col. 2, ll. 10–17
(“[T]he nature of the cellular radio spectrum is such that it
is a medium that is expected to be shared.”). The first
method, Time Division Multiple Access (“TDMA”), assigns
each device a unique time slot during which the device may
transmit data to the base station. The second method,
Code Division Multiple Access (“CDMA”), assigns each de-
vice a unique code so that they can all transmit data at the
same time.
The ’244 patent claims a “subscriber unit,” e.g., a mo-
bile device, that can automatically select the best available
wireless network and then connect to it. Id. at col. 2, ll. 63–
67. In particular, the subscriber unit can connect to a wire-
less local area network, if one is in range, or connect to a
cellular network if there is no nearby wireless local area
network. Id.
Claim 8, which depends on claim 1, provides:
1. A subscriber unit comprising:
a cellular transceiver configured to communicate
with a cellular wireless network via a plurality of
assigned physical channels;
an IEEE 802.11 transceiver configured to com-
municate with an IEEE 802.11 wireless local area
network; and
a processor configured to maintain a communica-
tion session with the cellular wireless network in
an absence of the plurality of assigned physical
channels while the IEEE 802.11 transceiver com-
municates packet data with the IEEE 802.11 wire-
less local area network.

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IN RE: IPR LICENSING, INC. 4
. . .
8. The subscriber unit of claim 1, wherein the cel-
lular wireless network is a code division multiple
access (CDMA) wireless network, and the cellular
transceiver is a cellular code division multiple ac-
cess (CDMA) transceiver.
Id. at col. 11, ll. 6–16, 39–42.
Two limitations recited in claim 8 are relevant to this
appeal. First, claim 8 requires the subscriber unit to
“maintain a communication session with the cellular wire-
less network in an absence of the plurality of assigned
physical channels.” Id. The Board construed this phrase
to mean “maintain a logical connection with the cellular
wireless network when none of the plurality of physical
channels are in use by the subscriber unit.” That construc-
tion was not disputed in the previous appeal.
IPR Licensing, 685 F. App’x at 936 n.1. A logical connec-
tion means the device stores information about the cellular
network even while the device is sending data over a wire-
less local area network. This allows the device to quickly
re-establish an end-to-end connection over the cellular net-
work if necessary. Claim 8 also requires the subscriber
unit to communicate with a CDMA cellular wireless net-
work via a CDMA transceiver.
B. Prior Art
1. Jawanda
U.S. Patent No. 6,243,581 (“Jawanda”) describes a “mo-
bile computer terminal,” e.g., a laptop, that connects to ei-
ther wireless or cellular networks. J.A. 835 (col. 6, ll. 21–
42). The terminal can automatically determine which of
these connections has the higher bandwidth and then
transmit data via the faster connection. Id. If the slower
connection becomes the faster connection at any time, the
terminal “seamlessly hand[s]-off” data transmission to the
faster connection. Id. Jawanda’s specification also states

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IN RE: IPR LICENSING, INC. 5
that “wireless signals can be transmitted according to any
currently available or future wireless data protocol such as
[CDMA] . . . or [General Packet Radio Service].” J.A. 834
(3:6–9).
2. GPRS and the PDP Context feature
The General Packet Radio Service Standards (“GPRS”)
is a set of ten sections from the more general Global System
for Mobile Communication Standard (“GSM”). Jawanda
“discloses GPRS and CDMA as alternative protocols.” IPR
Licensing, 685 F. App’x at 939. Among other things, the
GPRS standards disclose a “Packet Data Protocol (PDP)
Context feature.” Id. The PDP Context feature “preserves
information about the cellular communication session be-
tween the mobile devi[c]e and base station.” Remand De-
cision, 2018 WL 1224736, at *5 (citing J.A. 995).
3. IEEE 802.11
The Institute of Electrical and Electronics Engineers
802.11 Standard (“IEEE 802.11”) is a protocol for transmit-
ting data over wireless local area networks. Id.
4. UMTS
The Universal Mobile Telecommunications System
Standards (“UMTS”) describes a version of the CDMA pro-
tocol that references the PDP Context feature. Id. at *7.
C. Procedural History
1. Related District Court Litigation
On January 2, 2013, IPRL brought an action against
ZTE in the District of Delaware alleging infringement of
the ’244 patent (among others). The jury found all asserted
claims (including claim 8) of the ’244 patent infringed and
not invalid. The district court, however, eventually stayed
post-trial proceedings in that case pending completion of
the IPR involved in this case.

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IN RE: IPR LICENSING, INC. 6
2. The Board’s First Decision
ZTE filed a petition for inter partes review challenging
claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the ’244 pa-
tent on three grounds.1 Ground one challenged all claims,
based on a combination of Jawanda, GPRS, and IEEE
802.11. J.A. 305. Ground two challenged all claims, based
on a combination of U.S. Patent No. 6,681,259
(“Lemiläinen”), GPRS, and IEEE 802.11. J.A. 314. Ground
three challenged all claims, based on a combination of
Lemiläinen and UMTS. J.A. 321.
The Board instituted review on ground one and, citing
redundancy, denied institution on grounds two and three.
J.A. 378–79 (citing 37 C.F.R. § 42.108(a)). The Board then
concluded that all challenged claims were obvious in view
of Jawanda, GPRS, and IEEE 802.11. J.A. 635–68.
With respect to claim 8, the Board found that Jawanda did
not disclose establishing a logical connection between the
device and a cellular network. J.A. 658. But the Board
found that the PDP Context feature from GPRS did.
J.A. 658–59. The Board then found that a person of ordi-
nary skill would have been motivated to take the PDP Con-
text feature from GPRS and apply it to the system
described by Jawanda. J.A. 661–62. In doing so, the Board
rejected IPRL’s argument that a skilled artisan would not
have been motivated to incorporate the PDP Context fea-
ture from GPRS—a TDMA system—into a CDMA system.
According to the Board, this combination was obvious be-
cause Jawanda mentioned using CDMA. J.A. 666.
The Board also noted that the PDP Context feature was
eventually incorporated into the WCDMA, the Wideband
1 ZTE filed its original petition on March 21, 2014.
It then filed a corrected petition, which is the operative pe-
tition here, on May 19, 2014.

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IN RE: IPR LICENSING, INC. 7
Code Division Multiple Access (a later version of CDMA).
Id.
3. The First Appeal
IPRL appealed the Board’s first decision to this court.
We affirmed the Board’s conclusions as to all claims except
claim 8. IPR Licensing, 685 F. App’x at 939–40.
With respect to claim 8, we concluded that “the Board’s
analysis [was] wanting.” Id. at 939. As noted above, we
found no evidentiary support for the Board’s conclusion
that a POSITA would have applied the PDP Context fea-
ture from GPRS (relating to TDMA) in a CDMA system like
the one described in claim 8. Id. at 939 (“[Jawanda] does
not suggest that any aspects of the GPRS stand-
ard . . . should be incorporated into a CDMA standard.”).
Indeed, we noted that the only evidence cited by the Board
on this point was testimony that the PDP Context feature
was later incorporated into CDMA systems. Id. We found
that did not establish why a person of ordinary skill in the
art “at the time of the invention” would have been moti-
vated “to alter the standards with a reasonable expectation
of success.” Id. at 939–40. We therefore vacated the
Board’s findings as to claim 8 and remanded for the Board
to assess whether there was substantial evidence to sup-
port the conclusion that one of skill in the art would have
“a motivation to combine the PDP Context feature of the
GPRS standards with the CDMA network referenced in Ja-
wanda.” Id.
4. The Board’s Second Decision
The parties agreed that the scope of the remand was
limited to ground one and claim 8. J.A. 5509 (9:7–10)
(“We agree with counsel [for IPRL] that the question is the
obviousness of claim 8 in ground one as originally pre-
sented in the petition.”); see also J.A. 5507. The Board sub-
sequently ordered ZTE to submit a three page brief
“limited to a numeric listing of citations to the previously

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IN RE: IPR LICENSING, INC. 8
existing record, indicating where the evidence was origi-
nally introduced or argued in the Petition, concerning the
motivation to combine the PDP Context feature of the
GPRS standard . . . with a CDMA network as recited in
claim 8.” J.A. 9013. ZTE never filed anything.
Despite no additional evidence or argument, the Board
again found claim 8 obvious. Remand Decision, 2018 WL
1224736, at *1. The Board found that a person of ordinary
skill “would have been aware of the problem of mobile de-
vices frequently switching between networks and of solu-
tions ‘to transparently maintain a communication
session.’” Id. at *7. The Board based this conclusion on the
fact that “the PDP context feature was desirable for ad-
dressing” this problem, even in CDMA systems, “because
UMTS included a ‘PDP context’ feature, [and so] the use of
that feature in a CDMA-based system was not only known,
but recognized as beneficial.” Id. at *8. The Board also
concluded, as it had before, that Jawanda taught using
CDMA or GPRS and that a person of ordinary skill in the
art would have looked to GPRS “for details about how to
implement the cellular features taught in Jawanda.” Id.
The citation to UMTS was the only additional evidentiary
support the Board proffered to support its invalidity find-
ing as to claim 8.
IPRL timely appealed the Board’s final decision.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II. D ISCUSSION
IPRL argues that the Board improperly relied on prior
art, UMTS, that was not asserted in support of ground
one—the only instituted ground. ZTE argues that, if we
accept this argument, we should again remand this matter,
this time so that the Board can consider the other grounds
and evidence in the petition. We address each argument in
turn.

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IN RE: IPR LICENSING, INC. 9
A. Ground One and UMTS
Our review of final written decisions by the Board is
rooted in “basic principles of administrative law.” Pers.
Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir.
2017). These principles impose important limits on our re-
view of decisions by the Board. But they also impose im-
portant limits on the Board’s authority during inter partes
reviews. For example, “the Board must base its decision on
arguments that were advanced by a party, and to which the
opposing party was given a chance to respond.” In re Mag-
num Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
2016); see also Rovalma, S.A. v. Bohler-Edelstahl GmbH &
Co. KG, 856 F.3d 1019 (Fed. Cir. 2017). Whether the Board
improperly relied on new arguments is reviewed de novo.
In re NuVasive, Inc., 841 F.3d 966, 970 (Fed. Cir. 2016).
According to the Board’s regulations, an issue upon
which the Board does not institute review is not part of the
ensuing inter partes review proceeding. See, e.g., AIA Reg-
ulation Comments, 77 Fed. Reg. 48,680 at 48,689
(“Any claim or issue not included in the authorization for
review is not part of the review.”). The patent owner there-
fore has no opportunity to be heard on non-instituted
grounds during trial. 37 C.F.R. § 42.120 (“A patent owner
may file a response to the petition addressing any ground
for unpatentability not already denied.” (emphasis added));
see also Shaw Indus. Grp., Inc. v. Automated Creel Sys.,
Inc., 817 F.3d 1293 (Fed. Cir. 2016) (holding that petitioner
could not have reasonably raised a reference during inter
partes review where the Board denied institution on re-
lated ground). Nor does the patent owner have notice that
the Board might rely on a non-instituted ground in its final
written decision.
The Board therefore cannot rely on evidence relating
solely to grounds on which it never instituted. To hold oth-
erwise would allow the Board’s final written decision to
rest on arguments that a patent owner has no ability to

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IN RE: IPR LICENSING, INC. 10
rebut or anticipate. See Magnum Oil, 829 F.3d at 1381
(“[T]he Board must base its decision on arguments . . . to
which the opposing party was given a chance to respond.”).
But the Board did just that in relying on UMTS in its final
written decision here.
The fact that UMTS was not part of this inter partes
review is evident from the proceeding itself. ZTE’s petition
does not mention UMTS in discussing ground one—the
only ground on which the Board instituted review. IPRL’s
response therefore never referenced it either. Nor did
ZTE’s reply. Dr. Bims, ZTE’s expert, also confirmed that
the Board’s review was not based on UMTS. J.A. 4778.
(“[Q.] And Draft UMTS, the PTAB did not grant review
based on that? [A.] That’s my understanding.”).
And yet, the Board referenced UMTS several times on
remand when analyzing why claim 8 was unpatentable.
For example, in addressing why a person of ordinary skill
would have included the PDP Context feature in a CDMA
system—the key issue on remand—the Board reasoned
that “use of that feature in a CDMA-based system was not
only known, but recognized as beneficial” based on the fact
that “UMTS included a ‘PDP context’ feature.” Remand
Decision, 2018 WL 1224736, at *8.
ZTE insists that the Board’s reliance on UMTS was
proper because “[t]he Board addressed the Draft UMTS
Standards only as evidence of whether one skilled in the
art at the time of the invention would have known that the
PDP Context of the GPRS Standards could also be used
with CDMA.” Appellees’ Br. 34. But whether and when
one skilled in the art would have known that, and what the
implications of such knowledge might be, were the critical
questions on remand. Not only had ZTE not relied on the
UMTS standards in its petition, but when the Board spe-
cifically asked ZTE to point to any record evidence support-
ing the conclusion that there was a motivation to combine
the prior art references cited in ground one, ZTE never

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IN RE: IPR LICENSING, INC. 11
pointed to the Draft UMTS Standards; it pointed to noth-
ing. J.A. 9013 (seeking evidence “concerning the motiva-
tion to combine the PDP Context feature of the GPRS
standard . . . with a CDMA network”). The Board’s deci-
sion to rely on the Draft UMTS Standards to fill the gap in
its evidentiary finding was, thus, erroneous.2
ZTE’s attempt to justify the Board’s analysis by claim-
ing that the Board did not rely on matters outside of ground
one is wrong. Appellees’ Br. 35 (“[W]ith one harmless ex-
ception, all of the Board’s citations to the petition and to
Dr. Bims’ testimony were directed to either the overview
sections or the specific arguments of Ground 1.”).
The Board’s first reference to UMTS expressly cited ZTE’s
arguments under ground three. Remand Decision, 2018
WL 1224736, at *7 (citing J.A. 731–32 (overview sections);
J.A. 321 (argument as to ground three)). That is not harm-
less. And, while the Board’s analysis does, as it did before
remand, cite sections of ZTE’s petition addressing ground
one, UMTS is not mentioned in those sections.
Apart from UMTS, the Board’s decision is supported by
the same faulty reasoning we rejected in the previous ap-
peal. Compare, e.g., Remand Decision, 2018 WL 1224736,
at *7 (“Petitioner demonstrates convincingly the inclusion
of the PDP context feature in a CDMA-based standard in
arguing that the same PDP context feature disclosed in the
GPRS Standards is also included in the [WCDMA]
2 IPRL claims that, even if the Draft UMTS Stand-
ards had been cited in ground one, the standards do not fill
the evidentiary void we found in the Board’s judgment. The
fact that our decision is based on an error in the Board’s
process should not be read as an endorsement of its conclu-
sions on the merits. We express no opinion on the merits
of the Board’s reliance on the Draft Standards or its con-
clusions about what those standards might have taught
one of skill in the art.

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IN RE: IPR LICENSING, INC. 12
standard.” (internal quotation marks and brackets omit-
ted)), with IPR Licensing, 685 F. App’x at 939–940 (“While
[testimony about WCDMA] may establish that, at some
point, there was a reason to combine the PDP Context fea-
ture 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.”). We therefore conclude that rever-
sal as to the portion of the judgment on ground one that
addresses claim 8 is appropriate. Cf. In re Power Integra-
tions, Inc., 884 F.3d 1370, 1379 (Fed. Cir. 2018) (reversing
because “[t]he board has had two opportunities” to justify
its position and “failed”).
B. Remaining Grounds
Although reversal as to ground one is warranted, ZTE
argues that the matter should be remanded as to the two
non-instituted grounds under SAS. IPRL contends, how-
ever, that we lack jurisdiction to remand here because ZTE
failed to file a cross-appeal. Alternatively, IPRL argues
that, even if we could excuse ZTE’s failure we should not
do so.
1. Jurisdiction
According to IPRL, ZTE’s failure to file a cross-appeal
deprives us of jurisdiction to remand as to non-instituted
grounds. Setting aside whether a cross-appeal was even
required, we disagree that the cross-appeal rule should be
treated as a jurisdictional requirement.
It is well-established that the filing deadline for a no-
tice of appeal is jurisdictional. For example, in Bowles v.
Russell, 551 U.S. 205 (2007), a habeas petitioner failed to
file his appeal within the 30-day time limit established by
28 U.S.C. § 2107(a) and Fed. R. App. Proc. 4(a)(1)(A). The
Supreme Court held that this failure created a jurisdic-
tional defect. Bowles, 551 U.S. at 208. In doing so,

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IN RE: IPR LICENSING, INC. 13
however, the Supreme Court carefully distinguished “be-
tween court-promulgated rules and limits enacted by Con-
gress.” Id. at 211–12. The latter are jurisdictional, because
they are established by Congress, but the former are not.
Id. at 212.
The Supreme Court again emphasized this distinction,
between court-made rules and statutory rules, in Hamer v.
Neighborhood Hous. Servs. of Chicago, 138 S. Ct. 13 (2017).
There, the petitioner sought and received a sixty-day ex-
tension to file a notice of appeal from the district court un-
der Fed. R. App. Proc. 4(a)(5)(C). Hamer, 138 S. Ct. at 18.
The problem for the petitioner was that Rule 4(a)(5)(C) lim-
its extensions to thirty days. The Court of Appeals there-
fore concluded, acting sua sponte, that Rule 4(a)(5)(C)
imposed a jurisdictional deadline that the district court
could not extend. Id. It therefore dismissed the case as
untimely filed. Id. But the Supreme Court disagreed, con-
cluding that Rule 4(a)(5)(C) is not jurisdictional because
“the relevant time prescription is absent from the U.S.
Code.” Id. at 21. That distinguished the case from Bowles,
in which the time prescription was rooted in statute. Id.
(“In conflating Rule 4(a)(5)(C) with § 2107(c), the Court of
Appeals failed to grasp the distinction our decisions delin-
eate between jurisdictional appeal filing deadlines and
mandatory claim-processing rules, and therefore misap-
plied Bowles.”).
IPRL has not identified any statutory basis for the
deadline to file a cross-appeal. Indeed, there is none.
For example, 28 U.S.C. § 2107(a) sets the deadline for no-
tices of appeal without mention of cross-appeals.
See also 35 U.S.C. § 142 (same). The cross-appeal deadline
is instead rooted in the Federal Rules of Appellate Proce-
dure. See Fed. R. App. Proc. 4(a)(3). But, as the Court rec-
ognized in Hamer, that is not enough to mark the deadline
as jurisdictional. 138 S. Ct. at 17. Rather, “a provision gov-
erning the time to appeal in a civil action qualifies as juris-
dictional only if Congress sets the time.” Id. at 17

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IN RE: IPR LICENSING, INC. 14
(emphasis added). Congress has not done so here.
The cross-appeal deadline is therefore properly treated as
a claim-processing rule, i.e., it “promote[s] the orderly pro-
gress of litigation by requiring that the parties take certain
procedural steps at certain specified times” but does not
withdraw a case from our jurisdiction. Id. (quoting Hen-
derson v. Shinseki, 562 U.S. 428, 435 (2011)).
The Sixth Circuit addressed this question in Gunter v.
Bemis Co., 906 F.3d 484 (6th Cir. 2018), and reached the
same result. After discussing Bowles and Hamer, the court
explained that “only deadlines reflected in statutes, not
those spelled out just in the Federal Rules of Appellate Pro-
cedure, count as jurisdictional.” Gunter, 906 F.3d at 492.
It therefore concluded that “a timely notice of appeal is a
jurisdictional requirement. . . . [b]ut a timely notice of
cross-appeal is not.” Id. at 492–93; see also Mathias v. Su-
perintendent Frackville SCI, 876 F.3d 462, 471 (3d Cir.
2017) (same), cert. denied sub nom. Mathias v. Brittain, 138
S. Ct. 1707 (2018).
Rather than identify a statutory basis for the cross-ap-
peal deadline, IPRL relies on Minnesota Mining & Manu-
facturing Co. v. Chemque, Inc., 303 F.3d 1294 (Fed. Cir.
2002). In that case, we concluded that a party’s failure to
cross-appeal invalidity issues deprived us of jurisdiction to
consider those issues. Minnesota Mining, 303 F.3d at 1309
(“[E]ven a liberal construction of the notice requirement
[from Rule 3(c)(1)(B)] in this case warrants finding that
there is no jurisdiction since the notice of appeal for the
cross-appeal does not even mention validity is-
sues. . . . [W]e do not have jurisdiction to consider them.”).
But Minnesota Mining predates Bowles and Hamer,
which delineated a more precise line between jurisdictional
and claim-processing rules. See Hamer, 138 S. Ct. at 21
(explaining that several courts of appeals, and even some
Supreme Court opinions, had been “less than meticulous”
in using the term jurisdictional); see also Gonzalez v. Tha-
ler, 565 U.S. 134, 141 (2012) (“Recognizing our ‘less than

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IN RE: IPR LICENSING, INC. 15
meticulous’ use of the term [jurisdictional] in the past, we
have pressed a stricter distinction between truly jurisdic-
tional rules, which govern ‘a court’s adjudicatory author-
ity,’ and nonjurisdictional ‘claim-processing rules,’ which
do not.”). IPRL’s reliance on Minnesota Mining is therefore
unpersuasive in light of Bowles and Hamer. “Where inter-
vening Supreme Court precedent makes clear that our ear-
lier decisions mischaracterized the [jurisdictional] effects
of § 281, we are bound to follow that precedent rather than
our own prior panel decisions.” Lone Star Silicon Innova-
tions LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1235 (Fed.
Cir. 2019) (citing Troy v. Samson Mfg. Corp., 758 F.3d
1322, 1326 (Fed. Cir. 2014)).
Accordingly, we agree with ZTE that its failure to file
a cross-appeal—assuming one was required—does not
mean we lack the authority to remand as to the non-insti-
tuted grounds. We therefore turn to whether remand is
appropriate.
2. Remand
IPRL argues that remand based on SAS is not war-
ranted because ZTE did not seek remand until its response
brief on appeal. We need not decide whether waiver oc-
curred at any point before oral argument, however, because
ZTE’s withdrawal from this appeal clearly constitutes
waiver.
On October 25, 2019, after the completion of briefing
and following oral argument, ZTE filed an unopposed Mo-
tion to Withdraw from this appeal, pursuant to a settle-
ment agreement between the parties. Dkt. No. 64. We
granted this motion. ZTE’s withdrawal from this appeal is
a waiver of its request to institute an IPR on the non-insti-
tuted grounds.
III. CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. The Board’s obviousness

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IN RE: IPR LICENSING, INC. 16
finding as to claim 8 relied on a reference that IPRL could
not anticipate or rebut. It was therefore erroneous. Be-
cause the Board’s remaining findings as to claim 8 are un-
supported by substantial evidence, we reverse as to ground
one. And, because all other challenges to the Board’s final
judgment of invalidity are waived, we vacate that judg-
ment.
REVERSED AND VACATED
COSTS
No costs.

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