Mobility Workx, LLC v. Unified Patents, LLC

15 F.4th 1146

MOBILITY WORKX, LLC, Appellant

v.UNIFIED PATENTS, LLC, Appellee

Andrew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of The United States Patent and Trademark Office, Intervenor

2020-1441

United States Court of Appeals, Federal Circuit.

Decided: October 13, 2021

David A. Randall, Hackler Daghighian Martino & Novak, Los Angeles, CA, argued for appellant. Also represented by Michael Machat, Law Offices of Michael Machat, PC, West Hollywood, CA.

Jason R. Mudd, Erise IP, P.A., Overland Park, KS, argued for appellee. Also represented by Eric Allan Buresh ; Ashraf Fawzy, Jonathan Rudolph Kominek Stroud, Unified Patents, LLC, Washington, DC.

Dana Kaersvang, Civil Division, Appellate Staff, United States Department of Justice, Washington, DC, argued for intervenor. Also represented by Melissa N. Patterson; Kakoli Caprihan, Sarah E. Craven, Thomas W. Krause, Farheena Yasmeen Rasheed, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

Robert Greenspoon, Dunlap, Bennett, & Ludwig, PLLC, Chicago, IL, for amicus curiae US Inventor, Inc.

Before Newman, Schall, and Dyk, Circuit Judges.

Opinion concurring in part and dissenting in part filed by Circuit Judge Newman.

Dyk, Circuit Judge.

Mobility Workx ("Mobility") appeals a decision of the Patent Trial and Appeal Board ("Board") determining that claims 1, 2, 4, 5, and 7 of U.S. Patent No. 8,213,417 (the " ’417 patent") were unpatentable as obvious. In addition to requesting a remand under United States v. Arthrex, Inc. , ––– U.S. ––––, 141 S. Ct. 1970, 210 L.Ed.2d 268 (2021), and challenging the merits of the Board's decision, Mobility raises for the first time on appeal several additional constitutional challenges, including a challenge to the structure of the Board. We first address these other constitutional challenges because a determination that the Board is unconstitutionally structured or that the proceedings are otherwise unconstitutional would dispose of the case and make consideration of the Arthrex issue or the merits unnecessary.

We conclude that Mobility's constitutional arguments are without merit. Without reaching the merits of the Board's decision, in light of Arthrex , we remand to the Acting Director to determine whether to grant rehearing.

BACKGROUND

I

Mobility is the owner of the ’417 patent, which is titled "System, Apparatus, and Methods for Proactive Allocation of Wireless Communication Resources." ’417 patent, col. 1 ll. 1–3. The patent is "generally directed to allocation of communication resources in a communications network." Appellant's Br. 7.

The Background section of the ’417 patent explains that mobile communication systems are typically composed of mobile nodes (e.g., cell phones) that communicate with one another through a series of base stations. Base stations serve different zones or cells, such that when a mobile node moves from one cell to another, it must connect to a new base station. When a mobile node has connected to a new base station, i.e., when it is moving, it must let other mobile nodes know where it can be reached. This can be accomplished by having a mobile node register with a "home agent so that the home agent can remain a contact point for other nodes that wish to exchange messages ... with the mobile node as it moves from one location to another." ’417 patent col. 1 ll. 39–44.

This system allows a mobile node to "use two IP addresses, one being a fixed home address and the other being a care-of address." Id. col. 1 ll. 45–47. The home address is assigned by the home agent. The care-of address, on the other hand, is received when a mobile node moves out of its home network and connects to foreign networks using foreign agents that act "as wireless access points distributed throughout a coverage area of a network or an interconnection of multiple networks." Id. col. 1 ll. 57–60. However, delays and information losses can occur when a mobile node moves from one foreign network to another because "the new communication link cannot be set up until the mobile node arrives in the new foreign agent's physical region of coverage." Appellant's Br. 8.

The ’417 patent attempts to prevent these delays and data losses by using a ghost foreign agent and a ghost mobile node that "can be configured to register the mobile node and allocate resources for communicating with the mobile node according to a predicted future state of the mobile node." ’417 patent col. 2 ll. 44–61. In other words, the ghost mobile node operates by "signaling the foreign agent before the mobile node arrives in the foreign agent's physical region of coverage, based upon the predicted future state of the mobile node." Appellant's Br. 9. This, in turn, increases the speed with which a mobile node can connect to a new network, reducing delays and avoiding information losses.

In 2017, Mobility brought suit for infringement of the ’417 patent against T-Mobile and Verizon Wireless in the Eastern District of Texas (one of these proceedings has settled, and the other is stayed pending resolution of this appeal). On June 1, 2018, Unified Patents filed a petition seeking inter partes review of claims 1–7 of the ’417 patent on the theory that those claims would have been obvious over U.S. Patent No. 5,825,759 in combination with several other references. On December 2, 2019, the Board issued its final written decision, determining that claims 1, 2, 4, 5, and 7 were unpatentable as obvious, but that claims 3 and 6 were not shown to be unpatentable. Mobility appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

I

For the first time on appeal, Mobility raises constitutional challenges to the USPTO's structure under the Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011). Mobility argues that Board members have an impermissible financial interest in instituting AIA proceedings under the standard articulated in Tumey v. Ohio , 273 U.S. 510, 47 S.Ct. 437, 71 L.Ed. 749 (1927). Mobility's Tumey challenge has two parts. First, Mobility contends that Board members have an interest in instituting AIA proceedings to generate fees to fund the agency and ensure future job stability. Second, Mobility contends that individual administrative patent judges ("APJs") have a personal financial interest in instituting AIA proceedings in order to earn better performance reviews and bonuses.

A

Unified Patents and the government argue that Mobility forfeited these challenges because Mobility did not raise these theories before the Board.

Under Supreme Court and circuit precedent, agencies generally do not have authority to declare a statute unconstitutional. See Oestereich v. Selective Serv. Sys. Local Bd. No. 11 , 393 U.S. 233, 242, 89 S.Ct. 414, 21 L.Ed.2d 402 (1968) (Harlan, J., concurring in result) ("Adjudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies."); Thunder Basin Coal Co. v. Reich , 510 U.S. 200, 215, 114 S.Ct. 771, 127 L.Ed.2d 29 (1994) (agreeing with Justice Harlan's statement in Oestereich ); Riggin v. Off. of Senate Fair Emp. Pracs. , 61 F.3d 1563, 1569 (Fed. Cir. 1995) (noting the "general rule that administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments"). It follows that constitutional challenges to the statute under which the agency operates need not be raised before the agency. See Weinberger v. Salfi , 422 U.S. 749, 765, 95 S.Ct. 2457, 45 L.Ed.2d 522 (1975) (determining that the requirement of administrative exhaustion would be met if "the Secretary [of the Department of Health, Education, and Welfare] has satisfied himself that the only issue is the constitutionality of a statutory requirement, a matter which is beyond his jurisdiction to determine, and that the claim is neither otherwise invalid nor cognizable under a different section of the Act"); Celgene Corp. v. Peter , 931 F.3d 1342, 1357 (Fed. Cir. 2019) (reaching constitutional challenge to the Board raised for the first time on appeal).

In any event, we have discretion to consider new arguments for the first time on appeal. See Singleton v. Wulff , 428 U.S. 106, 121, 96 S.Ct. 2868, 49 L.Ed.2d 826 (1976) ("The matter of what questions may be taken up and resolved for the first time on appeal is one left primarily to the discretion of the courts of appeals, to be exercised on the facts of individual cases."); Golden Bridge Tech., Inc. v. Nokia, Inc. , 527 F.3d 1318, 1322–23 (Fed. Cir. 2008) ("[A]ppellate courts are given the discretion to decide" whether to consider arguments raised for the first time on appeal). Thus, we have "discretion to review a constitutional challenge not timely raised before the lower tribunal." In re DBC , 545 F.3d 1373, 1380 (Fed. Cir. 2008).

The government nonetheless argues that we should not address these arguments because they are dependent on the resolution of factual issues that should be presented to the PTAB in the first instance. Mobility did not in its opening brief request a remand to develop a more comprehensive record. We conclude that considering Mobility's constitutional challenges is appropriate because addressing these arguments does not require resolution of any disputed factual issues. See Celgene , 931 F.3d at 1357.

Mobility's challenge is based on various agency documents that Mobility argues can be judicially noticed. Under the Federal Rules of Evidence, "[t]he court may judicially notice a fact that is not subject to reasonable dispute because it: ... can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b). Judicial notice may be taken at any stage of a proceeding, including on appeal. Fed. R. Evid. 201(d).

Here, many of the proffered documents were published in the Federal Register or on the USPTO's...