The US Court of Appeals for the Federal Circuit reversed a
finding of obviousness by the Patent Trial and Appeal Board (PTAB),
concluding that the finding was based on a reference that was
included only in a non-instituted ground. In re: IPR Licensing,
Inc., Case No. 18-1805 (Fed. Cir. Nov. 22, 2019)
(O'Malley, J).
IPR Licensing (IPRL) owns a patent directed to a mobile device
that can dynamically connect to both a WiFi network and a cellular
network, and automatically selects the best network for use. The
claims of the patent require that (1) the mobile device maintains a
connection with a cellular network even when it is not in use
(e.g., when the device is also connected to WiFi), and (2)
that the cellular network is CDMA-based. At the time the patent was
filed, this type of always-on cellular connection feature was only
included in competing cellular networking protocols (e.g.,
GPRS and UMTS).
