Wireless Protocol Innovations, Inc. v. Tct Mobile, Inc., Tct Mobile (us) Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WIRELESS PROTOCOL INNOVATIONS, INC.,
Appellant
v.
TCT MOBILE, INC., TCT MOBILE (US) INC.,
Appellees
______________________
2021-2112
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01494.
______________________
Decided: July 19, 2022
______________________
K AYVAN B. N OROOZI, Noroozi PC, Los Angeles, CA, ar-
gued for appellant.
J ACOB SNODGRASS , PV Law LLP, Washington, DC, ar-
gued for appellees. Also represented by BRADFORD
CANGRO, J EREMY D EANE P ETERSON.
______________________
Before P ROST , T ARANTO, and CHEN, Circuit Judges.
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 2
CHEN, Circuit Judge.
This is the second appeal arising from inter partes re-
view of U.S. Patent No. 8,274,991 (’991 patent). On Febru-
ary 13, 2018, the Patent Trial and Appeal Board (Board)
issued a final written decision finding that claims 1 and
3–5 of the ’991 patent are unpatentable as obvious in view
of two separate prior art combinations. TCT Mobile, Inc. v.
Wireless Protocol Innovations, Inc., IPR No. 2016-01494,
2018 WL 914699, at *1, *16 (P.T.A.B. Feb. 13, 2018) (Final
Written Decision). Patent Owner Wireless Protocol Inno-
vations, Inc. (WPI) appealed to this court. On appeal, we
reversed the Board’s unpatentability finding with respect
to the first ground. Wireless Protocol Innovations, Inc. v.
TCT Mobile, Inc., 771 F. App’x 1012, 1016–18 (Fed. Cir.
2019) (Wireless Protocol I). We also vacated the Board’s
unpatentability finding with respect to the second ground
because we found that it was premised on an incorrect con-
struction of “grant pending absent state.” Id. at 1018. We
remanded for further proceedings in view of our construc-
tion that the claimed “grant pending absent state” does
“not [] permit the transmission of upstream data.” Id.
On remand, the Board reconsidered the second ground
raised in TCT’s petition and found that U.S. Patent No.
6,466,544 (Sen) does not disclose the “grant pending absent
state” limitation because Sen’s “Packet Standby” state per-
mits some transmission of data packets. The Board none-
theless found all challenged claims were unpatentable
because it would have been obvious to modify Sen to in-
clude a “grant pending absent state” as construed by this
court. TCT Mobile, Inc. v. Wireless Protocol Innovations,
Inc., IPR No. 2016-01494, 2021 WL 1686514, at *10
(P.T.A.B. Apr. 28, 2021) (Remand Decision). TCT raised
that unpatentability argument based on the modification
of Sen to meet the “grant pending absent state” claim lim-
itation for the first time on remand.
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 3
WPI appeals, arguing, among other things, that the
Board violated WPI’s due process rights by issuing its re-
mand decision 21 months after this court’s mandate and
that the remand decision improperly relied on a new the-
ory. We disagree with WPI that the Board violated WPI’s
due process rights or any statute, regulation, or internal
operating procedure by not meeting the goal to issue re-
mand decisions within six months of this court’s mandate
as set forth in the Board’s Standard Operating Proce-
dure 9. However, after review of the inter partes review
record, we agree with WPI that TCT improperly raised the
Sen-modification argument on remand. WPI’s patent
owner response sufficiently put TCT on notice of WPI’s par-
ticular understanding of the claim, including the construc-
tion of “grant pending absent state” we ultimately adopted
in our prior decision. In this circumstance, TCT’s failure
to raise its Sen-modification argument in its reply means
that TCT forfeited the Sen-modification argument. Accord-
ingly, we reverse the Board’s remand decision.
I
A
The ’991 patent relates to controlling data flow in
point-to-multipoint communication systems. ’991 patent
col. 1 ll. 26–29. Generally, when customer premises equip-
ment (CPE) seeks to transmit data upstream to a base sta-
tion controller (BSC), the CPE must undergo a process
known as “contention” where it competes with other CPEs
for bandwidth. Id. at Abstract, col. 1 ll. 39–42. The CPE
sends a request to the BSC for a desired amount of band-
width and, once that bandwidth becomes available, the
BSC permits the CPE to send data upstream. Id. col. 1
ll. 43–45. The challenged claims recite methods wherein a
CPE transitions among three different “states” to facilitate
communication with a centralized BSC.
In the first state, the “grant pending state,” the CPE
actively transmits data upstream to the BSC and uses a
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 4
process called “piggybacking” to also attach requests for
further bandwidth. Id. col. 1 ll. 55–62, col. 2 ll. 37–45. This
allows the CPE to continue to send data without repeatedly
entering into contention for data slots. Id. col. 1 ll. 39–45,
col. 1 ll. 61–63. In the second state, the “grant pending ab-
sent state,” the CPE requests bandwidth without engaging
in contention and without relying on the request “piggy-
backing” on transmission of upstream data. Id. col. 2 ll.
16–25, col. 2 l. 66 – col. 3 l. 3. Rather, as we concluded in
Wireless Protocol I, when the CPE is in the “grant pending
absent state,” the CPE “sends no upstream data.” Wireless
Protocol I at 1018 (quoting ’991 patent col. 2 ll. 8–22). In
the third state, the “idle” state, the CPE must contend for
bandwidth. ’991 patent col. 2 ll. 30–41. The CPE transi-
tions among these states based on its data transmission
needs.
Claim 1 of the ’991 patent is representative and reads:
1. A method for obtaining uplink (UL) transmis-
sion bandwidth in a point-to-multipoint commu-
nication system, where a customer premises
equipment (CPE) is communicating with a base
station controller (BSC) over a link shared with
other CPEs, comprising the steps of:
operating the CPE in a grant pending state
wherein the CPE awaits receipt of a band-
width grant from the BSC, receives the
bandwidth grant, transmits data to the
BSC using the granted bandwidth, trans-
mits further bandwidth requests using the
granted bandwidth and transitioning from
the grant pending state to a grant pending
absent state once the CPE has transmitted
upstream data to the BSC within a band-
width specified by the bandwidth grant re-
ceived from the BSC during the grant
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 5
pending state and the CPE has no pending
bandwidth requests;
operating the CPE in the grant pending ab-
sent state awaiting arrival of data for
transmission to the BSC and transmitting
a first type bandwidth request to the BSC
without entering into contention when the
CPE receives data for transmission;
transitioning operation of the CPE from
the grant pending absent state to the grant
pending state after a subsequent band-
width grant is received at the CPE; and
transitioning operation of the CPE from
the grant pending absent state to an idle
state if the CPE does not transmit any first
type bandwidth request to the BSC during
a timeout period.
Claims 3–5 directly or indirectly depend on claim 1 and
WPI does not make any separate patentability arguments
regarding those claims.
B
In October 2015, WPI filed a patent infringement ac-
tion against TCT in the Eastern District of Texas, asserting
the ’991 and other patents. TCT responded by filing peti-
tions for inter partes review, including one challenging
claims 1 and 3–5 of the ’991 patent. In the petition, TCT
presented three unpatentability grounds. The first two
grounds relied on World Intellectual Property Organiza-
tion Publication No. 99/61993 (Abi-Nassif) in combination
with a technical specification referred to as “DOCSIS 1.1.”
TCT Mobile, Inc. v. Wireless Protocol Innovations, Inc., IPR
No. 2016-01494, Dkt. No. 2, at 4 (P.T.A.B. July 27, 2016)
(Petition). The third ground relied on Sen, U.S. Patent No.
6,655,307 (Rydnell), and patent owner admitted prior art.
Id. TCT’s petition did not propose constructions for any
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 6
claim terms but—consistent with our 2019 decision’s con-
struction—did describe the “grant pending absent state” as
the state in which “the CPE does not send data to the BSC
and no grant is pending.” Petition at 10; see also id. at 12
(describing the “grant pending absent state” as the state
“in which the CPE is: . . . ‘awaiting arrival of data for trans-
mission to the BSC’”). Sen, the petition argued, teaches the
“grant pending absent state” by disclosing a “Packet
Standby” state in which a device equivalent to the claimed
CPE transmits empty packets but is “inactive (i.e., not
transmitting data).” Id. at 65; see also id. at 65–66 (“The
Packet Standby state 44 permits the [CPE equivalent] to
stay connected to the network even though it does not need
to send any data, thereby facilitating a fast switch from the
inactive state to being able to transmit data immediately
when the [CPE equivalent] becomes active (i.e., has data to
transmit).”).
On February 13, 2017, the Board instituted inter partes
review on all three grounds. Its institution decision, how-
ever, did not indicate whether the “grant pending absent
state” permitted or precluded transmission of data. TCT
Mobile, Inc. v. Wireless Protocol Innovations, Inc., IPR No.
2016-01494, Dkt. No. 8, at 4 (P.T.A.B. Feb. 13, 2017) (Insti-
tution Decision) (citing ’991 patent col. 2 ll. 23–29).
WPI’s patent owner response argued that Sen fails to
disclose “transitioning” between the “grant pending ab-
sent” and “grant pending” states after a “subsequent band-
width grant,” because Sen “resum[es] packet transmission
independently of any subsequent bandwidth grant.” Re-
sponse at 56. In other words, in WPI’s view, Sen lacks a
true transition between a no-data-transmission grant
pending absent state and a data-transmission grant pend-
ing state because data transmission can occur both before
and after a bandwidth grant, i.e., “independently of any
subsequent bandwidth grant.” In support of that argu-
ment, WPI cited to and quoted a portion of Sen indicating
that, while in the Packet Standby state, it can “transmit
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 7
the packets via the reduced amount of the original band-
width when the packets again need to be transmitted.” Id.
at 57.
On reply, TCT argued that “Sen clearly teaches [the
grant pending absent state] (by its [] [P]acket [S]tandby
state 44),” Reply at 18, and that Sen discloses maintaining
network connection in the Packet Standby state “even
though it may not need to send any data,” Reply at 20 (em-
phasis in original). The identified CPE-equivalent in Sen
transitions to the Packet Standby state when “it has no fur-
ther data to transmit” and remains in that state “to await
new data.” Id. at 21. In light of the parties’ apparent mu-
tual understanding that the claimed CPE does not trans-
mit data when in the claimed “grant pending absent state,”
TCT’s reply maintained that Sen’s Packet Standby state
teaches that limitation and never argued that Sen could be
readily modified to include a “grant pending absent state.”
See generally id.
In its final written decision, the Board concluded that
“[t]he claim does not preclude the sending of any data while
the CPE is in the grant pending absent state.” Final Writ-
ten Decision at *14 (emphasis added). Based on this under-
standing of the “grant pending absent state,” where the
CPE can transmit data upstream, the Board found all chal-
lenged claims to be unpatentable as obvious based on Abi-
Nassif in combination with DOCSIS 1.1, id. at *11, and Sen
alone or in combination with Rydnell, id. at *16. WPI ap-
pealed the final written decision to this court.
We reversed the Board’s decision with respect to the
first ground of unpatentability based on Abi-Nassif and
DOCSIS 1.1. Wireless Protocol I at 1017–18. We also va-
cated the Board’s decision with respect to the second
ground because the Board “applied a flawed claim con-
struction . . . counter to what the specification plainly
teaches.” Id. at 1018. Consistent with the specification
and the parties’ submissions, we held that the “‘grant
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 8
pending absent state’ as properly construed [does] not []
permit the transmission of upstream data while the CPE is
in that state.” Id. (emphasis added). We remanded for the
Board to consider the second ground—Sen alone or in com-
bination with Rydnell—in view of the proper construction.
Id. In so doing, we specifically declined to “prejudge what
arguments TCT has properly preserved or should now be
permitted to advance or what determinations as to Sen, Ry-
dnell, and admitted prior art are supported by the evi-
dence.” Id.
On remand, the Board permitted the parties to submit
additional briefing and expert testimony “limited to the is-
sue of whether Sen describes operating a CPE in a grant
pending absent state as interpreted by the Federal Circuit”
because “the Federal Circuit’s interpretation of ‘grant
pending absent state’ was neither proposed nor addressed
by either party during the trial.” J.A. 2813.
In its opening remand brief, TCT argued, as it had in
the original proceeding, that Sen expressly discloses a
“grant pending absent state.” TCT Mobile, Inc. v. Wireless
Protocol Innovations, Inc., IPR No. 2016-01494, Dkt. No.
56, at 11 (P.T.A.B. Feb. 15, 2020). TCT also argued for the
first time that, in the alternative, it would have been obvi-
ous to a skilled artisan to modify Sen to meet that limita-
tion. Id. “If Sen were understood as expressly teaching the
transmission of both data packets and control packets,”
TCT argued that “[o]ne of skill in the art would readily un-
derstand that the feature of sending control packets in
[Sen’s] Packet Standby state could be employed without
corresponding use of the feature of sending data packets in
the Packet Standby state.” Id. The parties disputed the
merits of the Sen-modification argument, and whether
TCT could raise that argument on remand, throughout the
remand briefing and during additional oral argument.
On April 28, 2021, the Board issued its remand deci-
sion finding that Sen does not disclose the claimed “grant
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 9
pending absent state,” but all challenged claims were un-
patentable as obvious based on TCT’s argument that “one
of ordinary skill in the art would understand that Sen could
be modified to permit only the sending of control packets
while in its Packet Standby state.” Remand Decision at *9.
WPI appealed, arguing that the Board improperly relied on
a new unpatentability theory on remand. Appellant’s Br.
19. For the following reasons, we agree that the Board im-
properly relied on the modification of Sen, because TCT for-
feited the argument by failing to present it prior to remand.
We have jurisdiction pursuant to 35 U.S.C.
§ 1295(a)(4)(A).
II
The main substantive dispute between the parties is
whether Sen renders obvious the “grant pending absent
state” limitation. We must first consider, however,
whether TCT preserved that argument by timely raising it
before the Board. Failure to timely assert a right or raise
an argument constitutes forfeiture. In re Google Tech.
Holdings LLC, 980 F.3d 858, 862–63 (Fed. Cir. 2020) (quot-
ing United States v. Olano, 507 U.S. 725, 733 (1993)). In
this case, we find that TCT was on notice of WPI’s claim
construction position on “grant pending absent state” by no
later than WPI’s patent owner response, and TCT thus for-
feited the Sen-modification argument by failing to even at-
tempt to introduce it prior to remand. Our decision in
Wireless Protocol I did not set forth a new claim construc-
tion never contemplated by the parties. Rather, the record
of the original proceedings and first appeal show that both
WPI and TCT understood that no data transmission occurs
during the claimed “grant pending absent state.”
Beginning with the petition, both parties consistently
understood “grant pending absent state” to refer to a state
in which the CPE does not transmit data. Petition at 10,
12; Preliminary Response at 6; Response at 56–57; Reply at
18, 20. Both parties cited to and quoted portions of the
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 10
specification stating that “[d]uring the grant pending ab-
sent state, the customer premises equipment sends no up-
stream data to the base station controller.” See Petition at
10 (citing ’991 patent col. 7 ll. 24–27); Preliminary Response
at 6 (citing ’991 patent col. 6 l. 26 – col. 7 l. 44). Based on
that mutual understanding, the parties disputed whether
Sen disclosed the “grant pending absent state” and
whether Sen disclosed transitioning to and from that state.
Petition at 65; Preliminary Response at 36–42; Response at
56–57; Reply at 20–21.
TCT acknowledges it understood, prior to its reply, that
WPI sought to distinguish the claimed “grant pending ab-
sent state” from Sen’s Packet Standby state because Sen’s
Packet Standby state involves some active data transmis-
sion. In its responsive brief in Wireless Protocol I, TCT
noted that “[b]efore the Board, WPI argued that Sen did
not teach a ‘grant pending absent state’ because Sen had
access to bandwidth (albeit significantly reduced band-
width) while in the [P]acket [S]tandby state.” J.A. 3083
(emphasis added). TCT further argued that the Board ex-
plicitly rejected WPI’s understanding of the “grant pending
absent state” by concluding that the claim language “does
not preclude the sending of any data . . . in the grant pend-
ing absent state.” Id. (quoting Final Written Decision at
*14). The record supports TCT’s explanation of WPI’s po-
sition during the original inter partes review proceedings
as to the meaning of “grant pending absent state.”
Before the Board, WPI argued Sen did not disclose
“transitioning” between the “grant pending absent” and
“grant pending” states because Sen described “resuming
packet transmission independently of any subsequent
bandwidth grant.” Response at 56. For support, WPI cited
to and quoted a portion of Sen indicating that, when in the
Packet Standby state, it can “transmit the packets via the
reduced amount of the original bandwidth when the pack-
ets again need to be transmitted.” Id. at 57. In other
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 11
words, active data transmission in Sen occurs regardless of
whether Sen is in the Packet Standby state.
Accordingly, TCT was on notice of WPI’s positions on
claim construction and Sen’s disclosure as to the “grant
pending absent state” limitation. Our prior decision’s
claim construction in no way departed from WPI’s under-
standing of the claim. Under these circumstances, if TCT
wanted to raise the argument that Sen’s Packet Standby
state could be modified to not send data packets, it needed
to at least try to introduce that argument for the Board’s
consideration no later than in its reply, rather than wait
until the case returned on remand. We thus conclude that
TCT forfeited the modification of Sen unpatentability ar-
gument and we reverse the Board’s finding that claims 1
and 3–5 of the ’991 patent are unpatentable as obvious in
view of the Sen-based ground.
III
Because we have found forfeiture for the reasons given
above, we need not and do not reach the question of
whether TCT had to raise its Sen-modification argument
in its petition for it to be timely raised, i.e., whether raising
it in reply would itself have been too late. Appellant’s Br.
19–28. The Board’s remand decision did not consider, for
example, TCT’s Sen-modification argument in view of ex-
isting standards for when a petitioner may introduce new
argument and evidence in a reply that was not presented
in the petition. See Chamberlain Grp. v. One World Techs.,
944 F.3d 919, 924–25 (Fed. Cir. 2019) (contrasting improp-
erly raising a “new issue” with permissibly clarifying a pre-
vious position). That is, the Board did not explore under
what circumstances it is permissible for a petitioner, in re-
ply, to adapt an argument in the petition in response to a
claim construction dispute raised by the patent owner in
its patent owner response. Nor does this particular ques-
tion appear to be addressed by the Board’s Consolidated
Trial Practice Guide or in a precedential Board decision.
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WIRELESS PROTOCOL INNOVATIONS, INC. v. TCT MOBILE, INC. 12
Therefore, the boundaries of that distinction are not at is-
sue here.
Instead, the Board permitted additional argument be-
cause, under their view, our construction on appeal “was
neither proposed nor addressed by either party during the
trial.” J.A. 2813. TCT argues this was proper under this
court’s decision in SAS Institute. Appellee’s Br. 31–32 (cit-
ing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341
(Fed. Cir. 2016), rev’d on other grounds sub nom. SAS Inst.,
Inc. v. Iancu, 138 S. Ct. 1348 (2018)). However, the circum-
stances of the present case are distinguishable. In SAS In-
stitute, the Board adopted a claim construction in its final
written decision of its own making that differed from the
Board’s own construction in its institution decision and the
parties had, leading up to the final written decision, relied
on and developed their arguments according to the Board’s
earlier construction. Id. at 1351. Here, in contrast, the
parties were given ample notice of and opportunity to ad-
dress what would eventually become our claim construc-
tion—as well as any arguments arising therefrom—
including prior to remand. Because the parties’ original
briefs were premised on the understanding that the “grant
pending absent state” did not allow data transmission,
there is no concern about “chang[ing] theories in mid-
stream” or “moving targets” warranting additional argu-
ment on remand. Id.; see also Oral Arg. at 8:09–45, 20:18–
21:00.
Moreover, SAS Institute did not specify the scope of the
remand in terms of potential new unpatentability argu-
ments. Nor did SAS Institute delineate the scope of a peti-
tioner’s ability to adapt unpatentability arguments on
reply or remand in the face of a claim construction argu-
ment by the patent owner. That issue presents a substan-
tial legal and policy question about the nature of inter
partes review, namely, the degree to which a petitioner is
bound to the specific elements of the unpatentability argu-
ment contained in its petition when the patent owner later
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counters with a claim construction that undermines the pe-
titioner’s original unpatentability ground. For the reasons
set forth above, this case does not present an opportunity
to explore such questions.
CONCLUSION
We have considered the parties’ remaining arguments
and do not find them persuasive. In view of the foregoing,
we reverse the Board’s remand decision finding the chal-
lenged claims unpatentable as obvious.
REVERSED
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