Ericsson Inc. et al. v. Intellectual Ventures I LLC

Docket No. 2016-1671 (IPR2014-00963)

May 29, 2018

Brief summary: PTAB IPR decision finding IV’s claims relating to “frequency hopping” in wireless systems not to be invalid for anticipation or obviousness reversed and remanded.

Summary: Ericsson appealed PTAB IPR decision finding claims 1-16 of US 6,952,408 relating to “frequency hopping” in wireless systems not to be invalid for anticipation by a US patent (US 5,592,480) or obviousness based on the ‘480 patent, the European Global System for Mobile Communications (“GSM standard”), and US 5,537,435. The PTAB limited its analysis to claim 1 and so, therefore, did the FC panel (Michigan, US 2015 (“a court may uphold agency action only on the grounds that the agency invoked”)). Ericsson argued “claim 1 is a ‘generic’ statement of the known method of frequency hopping” that “is disclosed in the [prior art] ‘480 patent”, as is the GSM standard. The ‘435 patent was alleged to disclose “further details regarding digital channelizers” and other features, but this combination was not addressed by the PTAB “because it did not reach the dependent claims”. The FC panel opinion explained that “[e]ach term of claim 1, including the terms of the preamble, is recited in the ‘480 patent”. The PTAB “reasoned that the ‘480 patent did not anticipate because frequency hopping was an ‘optional…functionality’”. The PTAB also found that Ericsson did not “show[] persuasively that the ‘480 patent discloses ‘changing from a first of said physical RF channels…to a second…while maintaining a same logical channel,’ as recited in claim 1 and each of its dependents”, which the FC panel concluded “is contrary to the evidence” (including expert testimony). IV’s expert stated that the method described in the ‘480 patent cannot remap the incoming data fast enough to support frequency hopping” but the FC panel explained that “an unsupported opinion is not substantial evidence” “[t]o contradict a reference” (Homeland Housewares, FC 2017). The FC panel concluded that the ‘480 patent “teaches…‘each and every element’ of claim 1…arranged or combined in the same way as in the claim’” (Blue Calypso, FC 2016) and “substantial evidence does not support the PTAB’s decision” of no anticipation. The PTAB also “held that claim 1 would not have been obvious because Ericsson did not prove a reasonable expectation of succss on the part of the skilled artisan” (e.g., “that the ‘obviousness combination it proposes would have worked for its intended purpose’”). The FC panel explained that “the experts were in agreement that a person having ordinary skill in the field would have known how to implement frequency hopping.” Thus, the FC panel disagreed with the PTAB’s nonobviousness finding. The FC panel therefore reversed the PTAB’s decision as to claim 1, and vacated and remanded the decision as to claims 2-16. FN5 described Judge Wallach’s dissent as arguing the FC panel made “no ‘findings regarding motivation to combine’” (Intelligent Bio-Sys., FC 2016) and counters that “the ‘480 patent itself teaches the combination, reciting ‘frequency hopping standards such as the [GSM]”. Judge Wallach’s dissent makes this point but also argues that the FC panel “improperly substitute[d] its own factual findings for those of the PTAB” (Elbit Sys., FC 2018; In re Warsaw, FC 2016).

This entry was posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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