NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

ZYXEL COMMUNICATIONS CORP.,

Appellant

v.

UNM RAINFOREST INNOVATIONS,

Appellee

______________________ 

2023-1272

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2021-

00582, IPR2021-00741.

______________________ 

Decided: July 23, 2024

______________________ 

JONATHAN IAIN MAX DETRIXHE, Reed Smith LLP, San 

Francisco, CA, argued for appellant. Also represented by 

PETER J. CHASSMAN, MICHAEL JOHN FORBES, Houston, TX.

 JAY P. KESAN, DiMuroGinsberg, P.C., Tysons Corner, 

VA, argued for appellee. Also represented by CECIL E. KEY; 

MICHAEL W. SHORE, The Shore Firm, Dallas, TX.

______________________ 

Before LOURIE, SCHALL, and TARANTO, Circuit Judges.

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LOURIE, Circuit Judge. 

ZyXEL Communications Corporation (“ZyXEL”) appeals from a final written decision of the United States Patent and Trademark Office Patent Trial and Appeal Board 

(“the Board”) granting in part patent owner UNM Rainforest Innovations’s (“UNMRI”) Motion to Amend the claims 

of U.S. Patent 8,565,326 (“the ’326 patent”). Qualcomm 

Inc. v. UNM Rainforest Innovations, IPR2021-00582, 2022 

WL 3364565 (P.T.A.B. Aug. 15, 2022) (“Decision”). The 

Board granted the motion to add substitute claims 6, 7, 9, 

and 10, finding them to have written description support 

and not to have been shown to be unpatentable, but denied 

the motion to substitute claim 8, which it found to lack 

written description support. Decision at *22–23. For the 

following reasons, we affirm. 

BACKGROUND

ZyXEL petitioned for, and the Board instituted, inter 

partes review (“IPR”) of the ’326 patent. In addition to opposing ZyXEL’s merits arguments, UNMRI filed a Motion 

to Amend (“Motion”) its claims, in which it sought, conditionally, to replace challenged claims 1–5 with new claims 

6–10. The Motion pointed to written description support 

for the limitation that UNMRI sought to add by amendment, but not for any of the originally included limitations. 

The Motion requested preliminary guidance from the 

Board pursuant to the Motion to Amend Pilot Program. 

See Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings under the America Invents Act before the Patent Trial 

and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019) (“Notice”). In opposition, ZyXEL argued that the Motion to 

Amend failed to comply with requirements under 37 C.F.R. 

§§ 42.121(b), 42.23(b) and Lectrosonics, Inc. v. Zaxcom, 

Inc., IPR2018-01129, 2019 WL 1118864 (P.T.A.B. Feb. 25, 

2019) (designated as precedential by the PTO Director), 

that a motion to amend must include written description 

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support for all elements of a proposed amended claim, not 

just elements proposed to be added by the amendment. 

In response to the Motion, the Board issued a Preliminary Guidance finding that UNMRI “d[id] not show a reasonable likelihood that it satisfie[d] the statutory and 

regulatory requirements associated with filing a motion to 

amend.” J.A. 591–92 (citing 37 C.F.R. §§ 42.121(a)(2)(ii) 

and 42.121(b)(1)). The Board stated that the Motion was 

required to include written description support for all claim 

limitations, not just the proposed new ones, but that 

UNMRI’s Motion had not done so. Id. (citing Lectrosonics, 

2019 WL 1118864, at *3). Despite UNMRI not identifying 

support for the claims as a whole, the Board still looked at 

the evidence identified for the new limitation and found 

that “[t]h[o]se same paragraphs and figures [cited by 

UNMRI], along with adjacent disclosures at paragraph 66 

of [U.S. Patent Application 12/425,004] appear to provide 

adequate written description support for proposed substitute claims 6, 7, 9, and 10 as a whole.” J.A. 592–93. Following the Preliminary Guidance, UNMRI filed a Reply in 

support of its Motion, providing new citations to the specification to show support for the claims as a whole and 

ZyXEL filed a Sur-Reply.

In its Final Written Decision, the Board found challenged claims 1–5 unpatentable as obvious. It granted 

UNMRI’s Motion to add proposed new claims 6, 7, 9, and 

10, but denied the Motion to add proposed claim 8, finding 

it lacked written description support. Decision at *20. The 

Board found written description support for claims 6, 7, 9, 

and 10, relying on evidence identified in UNMRI’s Reply. 

Id. It noted that, except for claim 8, ZyXEL did not substantively challenge the written description support and 

instead only argued that it was presented too late (i.e., in 

the Reply, rather than in the Motion). Id. The Board found 

that, according to the Motion to Amend Pilot Program Notice, UNMRI was permitted to “respond to the preliminary 

guidance and to the opposition to the motion to amend,” 

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and was “permitted to file new evidence, including declarations, with its reply.” Id. at *19 (citing Notice at 9501; Orthofix Med. Inc. v. Spine Holdings, LLC, IPR2020-01411, 

2022 WL 557892, *31 (P.T.A.B. Feb. 22, 2022)). Therefore, 

the Board held, “a patent owner is permitted to supplement 

its showing that there is support for the proposed substitute claims in a reply.” Id. The Board went on to find that 

claims 6, 7, 9, and 10 had not been shown to be unpatentable as obvious. Id. at *22–23.

ZyXEL timely appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

ZyXEL argues on appeal that the Board’s decision to 

grant-in-part UNMRI’s Motion is both an abuse of discretion and contrary to law. ZyXEL relies on 37 C.F.R. 

§ 42.121(b)(1), Aqua Prods. Inc. v. Matal, 872 F.3d 1290, 

1311 (Fed. Cir. 2017), Lectrosonics, and the Notice, which 

affirmatively cites § 42.121(b) and Lectrosonics. ZyXEL 

also raised an identical argument in ZyXEL Commc’ns 

Corp. v. UNM Rainforest Innovations, Case No. 22-2220, 

which was not designated by the parties as a companion to 

this case. It was thus assigned to a different panel and argued on a different day, Tuesday, May 7th, 2024—the day 

before we heard argument in this case. That case has since 

been decided, with a precedential opinion issued, rejecting 

ZyXEL’s argument that the Board erred in granting 

UNMRI’s Motion to Amend. ZyXEL Commc’ns Corp. v. 

UNM Rainforest Innovations, Case No. 22-2220 (Fed. Cir. 

July 22, 2024). On that reasoning, we too, therefore, find 

that the Board did not legally err or abuse its discretion in 

granting in part UNMRI’s Motion to Amend, or if it did, 

such error was harmless. As ZyXEL does not separately 

appeal the Board’s merits determinations that claims 6, 7, 

9 and 10 had sufficient written description support and 

were not shown to have been obvious, we affirm. 

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CONCLUSION

We have considered ZyXEL’s remaining arguments but 

find them unpersuasive. For the foregoing reasons, the decision of the Board is affirmed. 

AFFIRMED

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