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In re IPR Licensing, Inc.

Failure to File Cross-Appeal Does Not Withdraw Jurisdiction to Consider Appellee’s Request for Remand

In re IPR Licensing, Inc., __ F.3d __, 2019 WL 6222850 (Fed. Cir. Nov. 22, 2019) (Newman, O’MALLEY, Taranto) (PTAB) (3 of 5 stars)

Fed Cir vacates IPR obviousness determination.

Motivation to combine: On a single-issue remand from a previous appeal, the Board had determined that the record taught a motivation to combine sufficient to render the single remaining claim obvious. Because that determination was exclusively based on a reference not in the sole instituted ground, which was thus outside the record, it was improper and is reversed.

SAS remand: IPR petitioner ZTE sought remand to take up non-instituted grounds, per SAS, 138 S. Ct. 1348 (2018). The Fed Cir has jurisdiction to consider the request, notwithstanding that ZTE did not cross-appeal. The opinion describes how FRAP 4(a)(3)’s deadline for cross-appealing is not rooted in any statute. It is thus “properly treated as a claim-processing rule . . . [that] does not withdraw a case from our jurisdiction.” Op. at 14 (citing Hamer, 138 S. Ct. 13 (2017). Minnesota Mining, 303 F.3d 1294 (Fed. Cir. 2002), is not contrary, at least because it predates Hamer and Bowles, 551 U.S. 205 (2007).

Waiver: Taking up the remand issue, the opinion finds it waived, along with any other challenge to the PTAB’s judgment of invalidity, by ZTE’s withdrawal from the appeal post-oral argument. The invalidity determination is thus vacated.

KEYWORDS: INTER PARTES REVIEW; CROSS-APPEAL; JURISDICTION; WAIVER