Case: 25-1153 Document: 16 Page: 1 Filed: 12/11/2024
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` UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`2025-1153
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`IN RE: WSOU INVESTMENTS LLC
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`JOINT MOTION FOR LIMITED REMAND
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`Under Federal Circuit Rule 27(f), the parties jointly request that the Court
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`enter a limited remand to the United States Patent and Trademark Office (USPTO)
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`to allow the USPTO to decide appellant’s pending Petition Under 37 C.F.R. § 1.181
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`seeking reopening of prosecution. The parties also request that this Court retain
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`jurisdiction over the appeal during the limited remand.
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`This appeal arises from an ex parte reexamination of U.S. Patent No.
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`9,357,014 (the ’014 patent) having Control No. 90/014,994. During the
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`reexamination, the Examiner rejected claims 1–15, 18, and 19 (the Finally Rejected
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`Claims) of the ’014 patent. Patent Owner WSOU Investments LLC appealed the
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`rejections to the Patent Trial and Appeal Board (the Board). On April 30, 2024, the
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`Board issued its decision reversing the Examiner’s rejections and entering new
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`grounds of rejection for all of the Finally Rejected Claims. On July 1, 2024, Patent
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`Owner filed a “response under 37 C.F.R. § 41.50(b) for the reopening of
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`prosecution” (the Response). However, in a Notice mailed on July 23, 2024, the
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` UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`2025-1153
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`IN RE: WSOU INVESTMENTS LLC
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`JOINT MOTION FOR LIMITED REMAND
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`Under Federal Circuit Rule 27(f), the parties jointly request that the Court
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`enter a limited remand to the United States Patent and Trademark Office (USPTO)
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`to allow the USPTO to decide appellant’s pending Petition Under 37 C.F.R. § 1.181
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`seeking reopening of prosecution. The parties also request that this Court retain
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`jurisdiction over the appeal during the limited remand.
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`This appeal arises from an ex parte reexamination of U.S. Patent No.
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`9,357,014 (the ’014 patent) having Control No. 90/014,994. During the
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`reexamination, the Examiner rejected claims 1–15, 18, and 19 (the Finally Rejected
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`Claims) of the ’014 patent. Patent Owner WSOU Investments LLC appealed the
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`rejections to the Patent Trial and Appeal Board (the Board). On April 30, 2024, the
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`Board issued its decision reversing the Examiner’s rejections and entering new
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`grounds of rejection for all of the Finally Rejected Claims. On July 1, 2024, Patent
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`Owner filed a “response under 37 C.F.R. § 41.50(b) for the reopening of
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`prosecution” (the Response). However, in a Notice mailed on July 23, 2024, the
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`Case: 25-1153 Document: 16 Page: 2 Filed: 12/11/2024
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`Central Reexamination Unit determined that the Response was not a proper request
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`to reopen prosecution under 37 C.F.R. § 41.50(b)(1), and as a result, the
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`reexamination proceeding was returned to the Board for consideration of the
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`Response as a request for rehearing under 37 C.F.R. § 41.50(b)(2). On August 29,
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`2024, the Board issued a decision denying rehearing. On October 4, 2024, Patent
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`Owner filed a petition (the Petition) under 37 C.F.R. § 1.181, asserting that the
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`USPTO erroneously treated the Response as a request for rehearing and requesting
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`that prosecution be reopened. That Petition has not yet been decided.
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`The parties believe a limited remand is in the interest of judicial economy
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`because granting of the Petition would result in reopening of the reexamination
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`proceeding and dismissal of the pending appeal, and denial of the Petition would
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`provide a final decision from which WSOU could seek court review. The parties
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`believe this procedure is consistent with the Court’s rules as well as the Court’s
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`orders in other cases entering a limited remand but otherwise retaining jurisdiction
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`over the appeal where the finality of the underlying proceeding was unclear. See,
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`e.g., United Servs. Auto. Ass’n v. PNC Bank N.A., No. 23-1639, ECF 63 (Fed. Cir.
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`Nov. 14, 2024) (ordering limited remand and retaining jurisdiction over the appeals
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`where the record was unclear as to whether final judgments were entered on certain
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`counterclaims); David Netzer Consulting Eng’r LLC v. Shell Oil Co., No. 15-2086,
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`2
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`Case: 25-1153 Document: 16 Page: 3 Filed: 12/11/2024
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`ECF 47 (Fed. Cir. Mar. 30, 2016) (granting the parties’ joint motion for limited
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`remand so that the district court could rule on a motion to dismiss a counterclaim);
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`see also Windy City Innovations, LLC v. America Online, Inc., 217 F. App’x 980
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`(Fed. Cir. 2007) (granting limited remand to district court to consider a motion, but
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`otherwise retaining jurisdiction over the appeal). The parties further note that they
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`have expended relatively little resources on this appeal as the appeal is in its early
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`stages and neither party has filed a brief.
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`The parties therefore respectfully request a limited remand from this Court to
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`the USPTO so that the USPTO may decide the outstanding Petition under 37 C.F.R.
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`§ 1.181 to reopen prosecution. The parties agree that the parties will file a
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`notification informing the Court within 14 days after the USPTO finally decides the
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`Petition and recommending how the Court should proceed. Counsel for the parties
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`have conferred, and the parties have agreed to file this motion jointly.
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`CONCLUSION AND PRAYER FOR RELIEF
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`For these reasons, the parties respectfully request that the Court issue a limited
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`remand to allow the USPTO to decide Patent Owner’s Petition under 37 C.F.R.
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`§ 1.181 to reopen prosecution and that the Court retain jurisdiction over the appeal
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`during the limited remand.
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`3
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`Case: 25-1153 Document: 16 Page: 4 Filed: 12/11/2024
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`Dated: December 11, 2024
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` /s/ Ryan Loveless
`Ryan Loveless
`LOVELESS LAW GROUP PLLC
`4760 Preston Road
`No. 244-357
`Frisco, TX 75034
`(972) 292-8303
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`Sean D. Burdick
`BURDICK PATENTS, P.A.
`300 N. 6th Street
`Suite 200
`Boise, ID 83702
`(208) 327-8900
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`Attorneys for WSOU Investments LLC
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`Respectfully submitted,
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` /s/ Omar Amin
`Farheena Y. Rasheed
`Solicitor
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`Amy J. Nelson
`Deputy Solicitor
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`Omar Amin
`Peter J. Sawert
`Associate Solicitors
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`OFFICE OF THE SOLICITOR
`U.S. PATENT AND TRADEMARK OFFICE
`Mail Stop 8, P.O. Box 1450
`Alexandria, Virginia 22313
`(571) 272-9035
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`Attorneys for the Director of the
`U.S. Patent and Trademark Office
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`Case: 25-1153 Document: 16 Page: 5 Filed: 12/11/2024
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify that the foregoing motion complies with the type-volume
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`limitation in Fed. R. App. Proc. 27(d) and 32(g). The total number of words in the
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`foregoing motion is 634 words, as calculated by Microsoft Word.
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` /s/ Omar Amin
`OMAR AMIN
`Associate Solicitor
`U.S. Patent & Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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