ZyXEL Commc’ns Corp. v. UNM Rainforest Innovations

Authored by: Jeremy J. Gustrowsky

In a recent decision, the Federal Circuit provided important guidance on how patent owners can correct mistakes in motions to amend during inter partes review (IPR) proceedings. The case centered on U.S. Patent No. 8,265,096, which covers methods for constructing frame structures in wireless communication systems. ZyXEL Communications Corporation challenged several claims of this patent as being obvious, while the patent owner, UNM Rainforest Innovations, sought to amend the claims to address the challenge.

The Patent Trial and Appeal Board (PTAB) found most of the original claims (claims 1-4, 6, and 7) unpatentable as obvious, but initially upheld claim 8. The Board also allowed UNM Rainforest Innovations to amend its claims, even though the original motion to amend did not include all the required written description support. Instead, the patent owner was allowed to supplement its motion with a reply brief after receiving preliminary guidance from the Board—a process made possible by the PTAB’s MTA Pilot Program, which is designed to help parties fix errors in amendment requests.

ZyXEL argued that this procedure was improper and that the patent owner should not have been allowed to fix its motion after the fact. However, the Federal Circuit disagreed, finding that any procedural error was harmless because ZyXEL had a full opportunity to respond to the new information. The court also clarified that, under the MTA Pilot Program, reply briefs can be used to address deficiencies identified by the Board’s preliminary guidance, as long as the opposing party is not prejudiced.

Ultimately, the Federal Circuit affirmed the PTAB’s findings that the original claims were unpatentable, reversed the Board’s decision on claim 8 (finding it obvious as well), and sent the case back to the PTAB to decide whether the amended claims should also be found unpatentable under collateral estoppel or based on additional prior art. This decision highlights the flexibility of the PTAB’s amendment process and the importance of both sides having a fair chance to respond during IPR proceedings.