Zyxel Communications Corp. v. Unm Rainforest Innovations

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ZYXEL COMMUNICATIONS CORP.,
Appellant
v.
UNM RAINFOREST INNOVATIONS,
Appellee
______________________
2023-1272
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00582, IPR2021-00741.
______________________
Decided: July 23, 2024
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J ONATHAN I AIN MAX D ETRIXHE , Reed Smith LLP, San
Francisco, CA, argued for appellant. Also represented by
P ETER J. CHASSMAN, MICHAEL J OHN F ORBES , Houston, TX.
J AY P. K ESAN, DiMuroGinsberg, P.C., Tysons Corner,
VA, argued for appellee. Also represented by CECIL E. K EY ;
MICHAEL W. SHORE, The Shore Firm, Dallas, TX.
______________________
Before L OURIE, SCHALL , and T ARANTO, Circuit Judges.
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ZYXEL COMMUNICATIONS CORP . v.
UNM RAINFOREST INNOVATIONS
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L OURIE, Circuit Judge.
ZyXEL Communications Corporation (“ZyXEL”) ap-
peals from a final written decision of the United States Pa-
tent and Trademark Office Patent Trial and Appeal Board
(“the Board”) granting in part patent owner UNM Rainfor-
est Innovations’s (“UNMRI”) Motion to Amend the claims
of U.S. Patent 8,565,326 (“the ’326 patent”). Qualcomm
Inc. v. UNM Rainforest Innovations, IPR2021-00582, 2022
WL 3364565 (P.T.A.B. Aug. 15, 2022) (“Decision”). The
Board granted the motion to add substitute claims 6, 7, 9,
and 10, finding them to have written description support
and not to have been shown to be unpatentable, but denied
the motion to substitute claim 8, which it found to lack
written description support. Decision at *22–23. For the
following reasons, we affirm.
BACKGROUND
ZyXEL petitioned for, and the Board instituted, inter
partes review (“IPR”) of the ’326 patent. In addition to op-
posing ZyXEL’s merits arguments, UNMRI filed a Motion
to Amend (“Motion”) its claims, in which it sought, condi-
tionally, to replace challenged claims 1–5 with new claims
6–10. The Motion pointed to written description support
for the limitation that UNMRI sought to add by amend-
ment, but not for any of the originally included limitations.
The Motion requested preliminary guidance from the
Board pursuant to the Motion to Amend Pilot Program.
See Notice Regarding a New Pilot Program Concerning Mo-
tion to Amend Practice and Procedures in Trial Proceed-
ings under the America Invents Act before the Patent Trial
and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019) (“No-
tice”). In opposition, ZyXEL argued that the Motion to
Amend failed to comply with requirements under 37 C.F.R.
§§ 42.121(b), 42.23(b) and Lectrosonics, Inc. v. Zaxcom,
Inc., IPR2018-01129, 2019 WL 1118864 (P.T.A.B. Feb. 25,
2019) (designated as precedential by the PTO Director),
that a motion to amend must include written description
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support for all elements of a proposed amended claim, not
just elements proposed to be added by the amendment.
In response to the Motion, the Board issued a Prelimi-
nary Guidance finding that UNMRI “d[id] not show a rea-
sonable likelihood that it satisfie[d] the statutory and
regulatory requirements associated with filing a motion to
amend.” J.A. 591–92 (citing 37 C.F.R. §§ 42.121(a)(2)(ii)
and 42.121(b)(1)). The Board stated that the Motion was
required to include written description support for all claim
limitations, not just the proposed new ones, but that
UNMRI’s Motion had not done so. Id. (citing Lectrosonics,
2019 WL 1118864, at *3). Despite UNMRI not identifying
support for the claims as a whole, the Board still looked at
the evidence identified for the new limitation and found
that “[t]h[o]se same paragraphs and figures [cited by
UNMRI], along with adjacent disclosures at paragraph 66
of [U.S. Patent Application 12/425,004] appear to provide
adequate written description support for proposed substi-
tute claims 6, 7, 9, and 10 as a whole.” J.A. 592–93. Fol-
lowing the Preliminary Guidance, UNMRI filed a Reply in
support of its Motion, providing new citations to the speci-
fication to show support for the claims as a whole and
ZyXEL filed a Sur-Reply.
In its Final Written Decision, the Board found chal-
lenged claims 1–5 unpatentable as obvious. It granted
UNMRI’s Motion to add proposed new claims 6, 7, 9, and
10, but denied the Motion to add proposed claim 8, finding
it lacked written description support. Decision at *20. The
Board found written description support for claims 6, 7, 9,
and 10, relying on evidence identified in UNMRI’s Reply.
Id. It noted that, except for claim 8, ZyXEL did not sub-
stantively challenge the written description support and
instead only argued that it was presented too late (i.e., in
the Reply, rather than in the Motion). Id. The Board found
that, according to the Motion to Amend Pilot Program No-
tice, UNMRI was permitted to “respond to the preliminary
guidance and to the opposition to the motion to amend,”
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and was “permitted to file new evidence, including declara-
tions, with its reply.” Id. at *19 (citing Notice at 9501; Or-
thofix Med. Inc. v. Spine Holdings, LLC, IPR2020-01411,
2022 WL 557892, *31 (P.T.A.B. Feb. 22, 2022)). Therefore,
the Board held, “a patent owner is permitted to supplement
its showing that there is support for the proposed substi-
tute claims in a reply.” Id. The Board went on to find that
claims 6, 7, 9, and 10 had not been shown to be unpatenta-
ble as obvious. Id. at *22–23.
ZyXEL timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
ZyXEL argues on appeal that the Board’s decision to
grant-in-part UNMRI’s Motion is both an abuse of discre-
tion and contrary to law. ZyXEL relies on 37 C.F.R.
§ 42.121(b)(1), Aqua Prods. Inc. v. Matal, 872 F.3d 1290,
1311 (Fed. Cir. 2017), Lectrosonics, and the Notice, which
affirmatively cites § 42.121(b) and Lectrosonics. ZyXEL
also raised an identical argument in ZyXEL Commc’ns
Corp. v. UNM Rainforest Innovations, Case No. 22-2220,
which was not designated by the parties as a companion to
this case. It was thus assigned to a different panel and ar-
gued on a different day, Tuesday, May 7 th , 2024—the day
before we heard argument in this case. That case has since
been decided, with a precedential opinion issued, rejecting
ZyXEL’s argument that the Board erred in granting
UNMRI’s Motion to Amend. ZyXEL Commc’ns Corp. v.
UNM Rainforest Innovations, Case No. 22-2220 (Fed. Cir.
July 22, 2024). On that reasoning, we too, therefore, find
that the Board did not legally err or abuse its discretion in
granting in part UNMRI’s Motion to Amend, or if it did,
such error was harmless. As ZyXEL does not separately
appeal the Board’s merits determinations that claims 6, 7,
9 and 10 had sufficient written description support and
were not shown to have been obvious, we affirm.
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CONCLUSION
We have considered ZyXEL’s remaining arguments but
find them unpersuasive. For the foregoing reasons, the de-
cision of the Board is affirmed.
AFFIRMED
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