3g Licensing, S.a. v. Honeywell International Inc., Sierra Wireless, Ulc, Fka Sierra Wireless, Inc., Telit…

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
3G LICENSING, S.A.,
Appellant
v.
HONEYWELL INTERNATIONAL INC., SIERRA
WIRELESS, ULC, FKA SIERRA WIRELESS, INC.,
TELIT CINTERION DEUTSCHLAND GMBH, FDBA
THALES DIS AIS DEUTSCHLAND GMBH,
Appellees
______________________
2023-1557
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01141.
______________________
Decided: December 10, 2024
______________________
ANDREW PETER DEMARCO, Devlin Law Firm LLC,
Wilmington, DE, argued for appellant. Also represented by
TIMOTHY DEVLIN, ROBERT J. GAJARSA.
DANIEL TYLER KEESE, Perkins Coie LLP, Portland, OR,
argued for all appellees. Appellee Sierra Wireless, ULC
also represented by AMANDA TESSAR, Denver, CO.
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3G LICENSING, S.A. v. HONEYWELL INTERNATIONAL INC. 2
JEFFREY R. GARGANO, K&L Gates LLP, Chicago, IL, for
appellee Honeywell International Inc. Also represented by
BRIAN PAUL BOZZO, Pittsburgh, PA; ERIK HALVERSON, San
Francisco, CA.
GUY YONAY, Pearl Cohen Zedek Latzer Baratz LLP,
New York, NY, for appellee Telit Cinterion Deutschland
GmbH. Also represented by KYLE AUTERI, I.
______________________
Before LOURIE, REYNA, and HUGHES, Circuit Judges.
LOURIE, Circuit Judge.
3G Licensing, S.A., (“3G”) appeals from a final written
decision of the United States Patent and Trademark Office
Patent Trial and Appeal Board (“the Board”) holding claims
34–40 of U.S. Patent 7,215,653 (“the ’653 patent”)
unpatentable as obvious. Honeywell Int’l, Inc., v. 3G
Licensing S.A., No. IPR2021-01141, 2023 WL 157065
(P.T.A.B. Jan. 11, 2023) (“Decision”). For the reasons
provided below, we affirm.
BACKGROUND
The now-expired ’653 patent is directed to a mobile
communications system for controlling data transmission
between a base station and a mobile station (e.g., a
cellphone). ’653 patent, Abstract, col. 1 ll. 16–33. A base
station is the anchor-point of a network that allows a
cellphone to access a cellular network, typically a cell
tower. Id. col. 1 ll. 31–33. Representative claim 34 of the
’653 patent recites, in relevant part:
34. A mobile station apparatus for use in a mobile
communications system for controlling a data
transmission rate on a reverse link, the apparatus
comprising:
. . .
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3G LICENSING, S.A. v. HONEYWELL INTERNATIONAL INC. 3
control means connected with the receiving
means adapted to control the data
transmission rate based on the data rate
control command, wherein a bit is sent on a
reverse packet data control channel to
indicate whether the mobile station has
enough power and data to increase its data
transmission rate on a reverse packet data
channel.
Id. col. 20 ll. 5–8, 16–22 (emphasis added). The only claim
limitation of the ’653 patent disputed in this appeal is the
“increase availability bit” (“IAB”) limitation of independent
claims 34 and 37, which signals if the mobile station has
enough power and data to enable an increase in its data
transmission rate. Id. col. 20 ll. 16–22.
The ’643 patent claims priority from three Korean
Applications, two of which are relevant to this appeal:
2001-0006839 (“the ’6839 application,” dated February 12,
2001), and 2001-0057600 (“the ’57600 application,” dated
September 18, 2001). See J.A. 73. The ’6839 application
teaches how a mobile station’s data transmission rate can
be improved through a “reverse activity bit” (“RAB”) sent
on the reverse link. J.A. 2494. The ’6839 application also
discloses a reverse rate indicator (“RRI”) used to inform a
base station that a mobile station’s data transmission rate
has changed. E.g., J.A. 2501. The ’57600 application
teaches a bit used to signal if a mobile station has a
sufficient power margin and data to increase its data
transmission rate—i.e., an IAB. J.A. 2533.
Honeywell International Inc., Sierra Wireless, Inc.,
TCL Communication Technology Holdings Limited, TCT
Mobile International Limited, TCT Mobile, Inc., TCT
Mobile (US) Inc., TCT Mobile (US) Holdings, Inc., and Telit
Cinterion Deutschland GmbH (collectively “Honeywell”)
petitioned for inter partes review (“IPR”), arguing, among
other things, that claims 34–40 of the ’653 patent would
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3G LICENSING, S.A. v. HONEYWELL INTERNATIONAL INC. 5
Samsung, together with other references, would have
rendered obvious the challenged claims of the ’653 patent.
J.A. 236–37, 249.
In its pre-institution briefing, 3G argued the contrary,
contending that a person of ordinary skill in the art would
have understood the RRI disclosed in the ’6839 application
to indicate whether the mobile station has sufficient power
and data to enable an increase in its data rate—i.e., that
the RRI would have been understood to function as an IAB.
J.A. 384–87. Therefore, in 3G’s view, the ’653 patent is
entitled to the ’6839 application’s priority date, rendering
Samsung unavailable as prior art. 3G supported its
argument with slide 8 of Samsung, which it contended
demonstrates that an RRI can function as an IAB. Slide 8
provides two examples of “IAB setting,” including: (1)
“[r]edefining RRI[s],” and, (2) “add[ing]” an IAB to an RRI.
J.A. 387; J.A. 1084 (Slide 8 of Samsung).
In its decision instituting the IPR, the Board disagreed
that the RRI disclosed in the ’6839 application provided
sufficient written description for the IAB limitation and
also disagreed that slide 8 supported 3G’s contention.
J.A. 435–40. Accompanying its Institution Decision, the
Board provided a scheduling order stating that “[3G] is
cautioned that any arguments for patentability not raised
in the [post-institution] response may be deemed waived.”
J.A. 466.
In the post-institution proceedings, Honeywell
maintained that the ’6839 application did not provide
written description support for the IAB limitation.
J.A. 582–91. Likewise, 3G maintained its argument to the
contrary, that a person of ordinary skill in the art would
have understood that the RRI disclosed in the ’6839
application indicates whether a mobile station has
sufficient power and data to increase its data transmission
rate, thus providing written description support for the
IAB limitation. J.A. 535–37. And again, 3G made
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3G LICENSING, S.A. v. HONEYWELL INTERNATIONAL INC. 6
supporting arguments that slide 8 of Samsung confirms
that a person of ordinary skill in the art would have
understood that the RRI disclosed in the ’6839 application
could function as an IAB. J.A. 529–30. Post-institution,
however, 3G’s slide 8 argument was slightly different: 3G
contended that slide 8 confirms that an RRI can be adapted
to function as an IAB. J.A. 530.
The Board concluded that the RRI disclosed in the
’6839 application did not provide sufficient written
description support for the ’653 patent’s IAB limitation.
Decision at *11–16. Furthermore, the Board determined
that 3G had waived its argument relying on slide 8. Id. at
16. The Board explained that because 3G’s pre-institution
slide 8 argument was materially different from its post-
institution slide 8 argument, the argument was waived. Id.
Nevertheless, the Board addressed the merits of 3G’s slide
8 argument, concluding that slide 8 did not support 3G’s
contention that the RRI disclosed in the ’6839 application
provided written description support for the ’653 patent’s
IAB limitation. Id. at 16 n.6.
3G timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
3G raises two main arguments on appeal. First, 3G
argues that the Board erred by holding its argument
relying on slide 8 of Samsung waived. Second, 3G argues
that when slide 8 is properly considered, substantial
evidence does not support the Board’s finding that the
’6839 application lacks sufficient written description
support for the IAB limitation.
I
We begin with waiver. The Board found 3G’s slide 8
argument waived pursuant to the rule set out in the
Board’s Trial Practice Guide: that “[o]nce a trial is
instituted, the Board may decline to consider arguments
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3G LICENSING, S.A. v. HONEYWELL INTERNATIONAL INC. 7
set forth in a preliminary response unless they are raised
in the patent owner response.” Decision at *16. The Board
also cited this court’s decision, In re Nuvasive, Inc., 842
F.3d 1376, 1381 (Fed. Cir. 2016), in support. Decision at
*16. 3G argues that this was error for two reasons. First,
3G asserts that the Board’s waiver rule conflicts with the
IPR statutes. And second, 3G contends that the Board
incorrectly applied Nuvasive. We address each argument
in turn.
Looking at the IPR statutes, 3G first points to
35 U.S.C. § 313, which states that “[i]f an inter partes
review petition is filed . . . the patent owner shall have the
right to file a preliminary response to the petition”
(emphasis added). 3G then points to 35 U.S.C. § 316(a)(8),
which instructs the Director of the USPTO to prescribe
regulations “providing for the filing by the patent owner of
a response to the petition under section 313 after an inter
partes review has been instituted, and requiring that the
patent owner file with such response . . . any additional
factual evidence and expert opinions on which the patent
owner relies in support of the response” (emphases added).
In 3G’s view, because a patent owner is required to file
“additional factual evidence and expert opinions” post-
institution, the statutes must be read to mean that a patent
owner’s pre- and post-institution response should be read
together as a single, unitary whole. 3G’s Br. 27–28. That
is, according to 3G, arguments raised in a patent owner’s
pre-institution response are necessarily incorporated into
the post-institution response. Therefore, 3G argues that
the Board’s waiver rule conflicts with controlling statute by
requiring patent owners to re-raise arguments from their
pre-institution briefing post-institution.
We disagree. It is a non-sequitur that because a patent
owner must proffer new evidence and expert opinions post-
institution, arguments raised in the pre-institution
response are necessarily incorporated into the post-
institution response. No text in the statutes requires such
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3G LICENSING, S.A. v. HONEYWELL INTERNATIONAL INC. 8
a reading. On the contrary, the statutes upon which 3G
relies explicitly state that a patent owner’s pre- and post-
institution responses are distinct papers. Compare 35
U.S.C. § 313 (discussing a patent owner’s “preliminary
response”); with 35 U.S.C. 316(a)(8) (discussing a patent
owner’s response . . . after an inter parties review has been
instituted). The Board’s waiver rule therefore comports
with the IPR statutes.
As for Nuvasive, 3G argues that that case holds only
that a patent owner waives an argument made in its pre-
institution response when the patent owner: (1) fails to
raise the argument again in its post-institution response,
and (2) expressly abandons that argument post-institution.
3G’s Br. 25–26. Because it never expressly abandoned its
slide 8 argument, 3G argues that the Board erroneously
applied Nuvasive here. Again, we disagree.
In Nuvasive, the patent owner’s pre-institution
response challenged the public accessibility of the prior art
references put forth by the petitioner. 842 F.3d 1376, 1380.
The Board was not persuaded by those arguments and
instituted IPR. See id. As here, the Board’s scheduling
order accompanying the institution decision provided that
“[t]he patent owner is cautioned that any arguments for
patentability not raised and fully briefed in the response
will be deemed waived.” Id. at 1381. In its post-institution
briefing, the patent owner did not make any arguments
concerning the public accessibility of the asserted prior art
and confirmed that it was abandoning the argument at an
oral hearing. Id. at 1380–81. On appeal, we held that
because the patent owner “no longer contested the public
accessibility of the prior art references” post-institution,
those arguments were waived. Id. at 1381. Although we
noted that the patent owner’s counsel confirmed at the oral
hearing that the patent owner was no longer pursuing its
public accessibility arguments post-institution, our holding
did not require the patent owner to expressly abandon the
argument for it to be waived. See id.
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Here, 3G made an argument relying on slide 8 in its
pre-institution response. 3G specifically contended that
“slide 8 . . . recognizes that an indicator bit such as the RRI
can indicate whether the mobile station has enough power
and data to increase the data transmission rate.” J.A. 349.
Put differently, 3G argued that slide 8 established that an
RRI—on its own—can function as an IAB. Likewise, in
3G’s pre-institution sur-reply, 3G contended that
“Samsung’s eighth slide” supported its assertion that the
’6839 application’s “disclosure of an RRI would be sufficient
for a [person of ordinary skill in the art] to understand [the
IAB limitation] described in the claims of the ’653 patent.”
J.A. 386–87. And just as in Nuvasive, the Board’s
Institution Decision was accompanied by a scheduling
order warning that any arguments 3G does not re-raise in
its post-institution briefing may be waived. J.A. 466.
But 3G’s argument relying on slide 8 changed post-
institution. In its post-institution response, 3G did not
contend that a person of ordinary skill in the art would
have understood that an RRI itself can function as an IAB.
Rather, 3G argued in its post-institution response that a
person of ordinary skill in the art would have understood
the RRI disclosed in the ’6839 application to function as an
IAB because slide 8 states that an RRI can be “redefined”
or “add[ed] [to]” in order to function as an IAB—i.e., that
an RRI must be modified to function as an IAB. J.A. 530.
The same is true of 3G’s post-institution sur-reply, in which
it stated “[a]s can be plainly seen in Samsung, slide 8, RRI
is referenced for both examples of so-called ‘IAB setting’
[referring to RRI redefinition] [and] . . . even ‘adding a
dedicated bit’ relies on using RRI.” J.A. 631.
Accordingly, because 3G did not maintain the
argument it brought pre-institution, i.e., that slide 8
confirms that an RRI can itself function as an IAB, in its
post-institution briefing, the Board did not err in finding
3G’s slide argument to be waived pursuant to its Trial
Practice Guide and Nuvasive.
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Because we conclude that the Board did not err in
holding that 3G waived its slide 8 argument, we need not
address whether the Board erred in finding the ’6839
application lacks written description support in light of
slide 8. Nevertheless, for the sake of thoroughness, we
proceed to address 3G’s arguments as to that issue as if
there were no waiver and conclude that substantial
evidence supports the Board’s finding for lack of written
description.
II
For a claim to be entitled to the “the filing date of an
earlier application under 35 U.S.C. § 120, each application
in the chain leading back to the earlier application must
comply with the written description requirement of
35 U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1571 (Fed. Cir. 1997). Each application in the chain
must therefore “reasonably convey[] to those skilled in the
art that the inventor had possession of the [later-claimed]
subject matter as of the filing date.” Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “Sufficiency of written description is a question of
fact, reviewed for substantial evidence.” Gen. Hosp. Corp.
v. Sienna Biopharms., Inc., 888 F.3d 1368, 1371 (Fed. Cir.
2018).
As noted, the ’6839 application teaches how a
cellphone’s data transmission rate can be improved
through an RAB sent on the reverse link and discloses an
RRI which is used to inform a base station that a
cellphone’s transmission data rate has changed. J.A. 2494,
2501. The Board found that a person of ordinary skill in
the art would not have understood the RRI disclosed in the
’6839 application to function as an IAB and therefore that
the ’653 patent is not entitled to the ’6839 application’s
priority date. Decision at *11–16. That finding was
supported by substantial evidence.
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As the Board recognized, there is nothing “in the ’6839
application that actually discloses, either expressly or
inherently, that the mobile station uses information about
its power and data to make a decision about whether it can
increase its data transmission rate,” as the claims require.
Id. at *12. The Board relied not only on the ’6839
application itself, but also on the testimony of Honeywell’s
expert, who stated that a person of ordinary skill in the art
would have not understood the RRI disclosed in the ’6839
application to function as an IAB. See id. at *11–12.
3G contends that the Board’s conclusion was erroneous
because slide 8 “confirms” that a person of ordinary skill in
the art would have understood that the RRI disclosed in
the ’6839 application can function as an IAB. 3G Brief at
29–30. But slide 8 teaches that an RRI can function as an
IAB only when an RRI is “redefined” or “added” to an IAB.
That the RRI disclosed in the ’6839 application must be
modified to function as an IAB is not sufficient to satisfy
the written description requirement. As we have
explained, “[e]ntitlement to a filing date does not extend to
subject matter which is not disclosed. . . . Rather, a prior
application itself must describe an invention.” Lockwood,
107 F.3d at 1572–73 (emphasis added).
The Board’s finding that the ’653 patent lacks written
description support for the IAB limitation was therefore
supported by substantial evidence.
CONCLUSION
We have considered 3G’s remaining arguments and
find them unpersuasive. For the reasons set forth above,
we affirm the Board’s final written decision.
AFFIRMED
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