On Tuesday, November 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Google LLC v. Conversant Wireless Licensing, which vacated a decision by the Patent Trial and Appeal Board (PTAB) to uphold the validity of patent claims owned by Conversant after conducting an inter partes review (IPR) proceeding petitioned by Google and LG Electronics. The Federal Circuit panel of Circuit Judges Kathleen O’Malley, Raymond Chen and Kara Stoll found that the PTAB erred in its final written decision by failing to consider the primary argument raised in the original IPR petition.
The patent-at-issue in this case is U.S. Patent No. 7072667, titled Location Information Service for a Cellular Telecommunications Network. Originally issued to Nokia Corporation in July 2006, the ‘667 patent was subsequently assigned to Core Wireless Licensing S.A.R.L. and Microsoft before becoming Conversant’s property in September 2017. It covers a method of providing a location finding service to mobile stations in a cellular telecommunications network in such a way that allows mobile station users to locate other users in a cellular network without first having to pre-register with the location system.
The ‘667 patent was asserted by Core Wireless against LG Electronics in U.S. district court back in September 2014, one of 18 patents asserted in that case. LG responded by filing petitions for two IPRs on the ‘667 patent and was joined by Google as a petitioner in both proceedings. One IPR resulted in claims 12 through 14 of the ‘667 patent being held as unpatentable while the IPR appealed to the Federal Circuit upheld claims 1 through 3 and 8 through 14; Core Wireless had amended claims 4 through 7 and claim 15 during that IPR.
In the petition for IPR filed by Google and LG, petitioners argued that every limitation of claim 1 of the ‘667 patent was disclosed by WIPO Patent Application No. 2000036430, Locating System for Mobile Stations (“Staack”). Google and LG argued that Staack didn’t disclose a requirement to pre-register for location-based services, a negative limitation which satisfies the ‘667 patent’s stated claim limitation regarding the use of the location service without pre-registering. Petitioners cited two previous PTAB decisions which permitted a negative limitation theory to support this claim. Petitioners also argued that, while the patent owner proposed the maintenance and use of a list of entities permitted to receive location finding information was itself a form of registration, Staack made clear that those features are optional and, under case law, such optional inclusion was a disclosure that both contained and didn’t contain the feature.
The PTAB instituted the IPR, delineating Google and LG’s arguments into two separate contentions on Staack’s negative limitation disclosure and, if this argument failed, the optional nature of Staack’s registration met the “without pre-registration” limitation. In the final written decision terminating the IPR, however, the PTAB conflated the analysis on both the negative-limitation and the non-instituted optional-feature arguments. The PTAB’s decision found that the petitioners had not met their burden of proof on Staack’s disclosure of the “without pre-registering” limitation without either addressing the negative-limitation argument or finding that Staack does disclose pre-registration.
On appeal, the Federal Circuit had asked for additional briefing to determine whether the petitioners lacked standing. The factors for standing set out by the Federal Circuit’s 2018 decision in E.I. DuPont de Nemours & Co. v. Synvina C.V. require an appellant to have suffered an injury in fact fairly traceable to the challenged conduct of the defendant which is likely to be redressed by a favorable judicial decision. The record on appeal presented a strong basis for standing, the Federal Circuit found. Although Google wasn’t targeted in the 2014 infringement suit against LG, the suit implicated the Google Maps application as performing the claimed method along with the LG Maps-Enabled Devices service. The Federal Circuit also found Article III standing based on the argument that LG might be prohibited under 35 U.S.C. § 315(b) from filing for an IPR if the ‘667 patent was ever asserted against it again in the future (as if Apple hasn’t provided a blueprint for how to get around Section 315(b) at the PTAB) and that both LG and Google would be collaterally estopped from making certain obviousness or anticipation arguments by Section 315(e).
Finally, the Federal Circuit found that the PTAB’s final written decision simply reiterated the optional feature argument that Conversant was allowed to argue if the negative limitation argument failed; the appellant court found that the PTAB never actually decided the negative limitation argument. On remand, the Federal Circuit ordered the PTAB to consider the negative limitation argument and to consider all arguments and evidence presented by both the petitioners and the patent owners regarding whether Staack discloses the “without pre-registration” limitation.
“It is good on one hand to see the Federal Circuit overturn the PTAB for failing to thoughtfully consider and address all the evidence and arguments presented by the parties,” said Gene Quinn, patent attorney and President & CEO of IPWatchdog.com. “Still, it is hard to reconcile decisions where the Federal Circuit bends over backwards to give more process and procedural rights to petitioners when for so long patent owners have been railroaded at the PTAB and then had those summary execution proceedings rubber stamped by the Federal Circuit. If increased scrutiny on the PTAB is a two-way street I welcome it.”