IP Law Daily PTAB’s greenlight of Intellectual Ventures’ cellular communications patent reversed
Tuesday, May 29, 2018

PTAB’s greenlight of Intellectual Ventures’ cellular communications patent reversed

By Cheryl Beise, J.D.

The Patent Trial and Appeal Board’s conclusion following inter partes review that a cellular communications patent directed to frequency hopping owned by Intellectual Ventures I LLC was invalid and anticipated was not supported by substantial evidence, the U.S. Court of Appeals for the Federal Circuit had held. Among other things, the Board erred in invalidating independent claim 1 based on irrelevant disclosures in the specification. The Board’s decision as to claim 1 was reversed, and its invalidation of the remaining dependent claims was vacated and remanded. In a dissenting opinion, Circuit Judge Wallach opined that the majority improperly substituted its own factual findings for those of the Board (Ericsson Incorporated v. Intellectual Ventures I LLC, May 29, 2018, Newman, P.).

Intellectual Ventures I LLC ("IV") owns U.S. Patent No. 6,952,408 (the ’408 patent), issued on October 15, 1998, and entitled "Method of Baseband Frequency Hopping Utilizing Time Division Multiplexed Mapping between a Radio Transceiver and Digital Signal Processing Resources." Frequency hopping is used in wireless systems in which a basestation communicates with entities (such as mobile subscribers) on varying radio frequencies, so as to reduce interference among communications. Ericsson Incorporated and Telefonaktiebolaget LM Ericsson (collectively, "Ericsson") petitioned for inter partes review of all 16 claims of the ’408 patent.

The Board instituted review on the grounds of (1) anticipation of claims 1–10 and 12–16 by U.S. Patent No. 5,592,480 ("Carney" or the ’480 patent) and (2) obviousness of claims 1–16, based on the ’480 patent together with the GSM Standard "Radio Sub-system Link Control, European Telecommunications Standards Institute, v. 3.8.0" ("the GSM standard") and U.S. Patent No. 5,537,435 (the ’435 patent). The Board held all 16 claims were patentable. In particular, the Board found that independent claim 1 is neither anticipated nor obvious, and did not separately analyze dependent claims 2–16.

Ericsson appealed. The Federal Circuit limited its review to the Board’s analysis of claim 1.

Anticipation—the ’480 patent. Ericsson argued that claim 1 of ’408 patent is a "generic" statement of the known method of frequency hopping implemented at broadband basestations and that all the limitations of claim 1 are shown in the prior art ’480 patent. The ’480 patent was issued on March 13, 1995, and is titled, "Wideband wireless basestation making use of time division multiple-access bus having selectable number of time slots and frame synchronization to support different modulation standards."

The Board acknowledged that the ’408 and ’480 patents "share significant disclosures," but reasoned that the ’480 patent did not anticipate because frequency hopping was an "optional . . . functionality." Although Figure 1 in both patents was an identical diagram of the broadband basestation, the Board found that the subordinate figures showed differences between the ’480 and ’408 patents. "However, such differences are not reflected in claim 1, whose scope is indistinguishable from the disclosure of the ’480 patent," the Federal Circuit said.

To show differences, IV’s expert stated that the method described in the ’480 patent cannot remap the incoming data fast enough to support frequency hopping, but this testimony contradicted the statement in the ’480 patent that the GSM frequency hopping standard may be used. However, an unsupported opinion is not substantial evidence to contradict a reference, the court said. The Board erred adopting the opinion of IV’s expert. The Federal Circuit concluded that substantial evidence did not support the Board’s decision, and that claim 1 is anticipated by the disclosure in the ’480 patent.

Obviousness. The Board found that claim 1 would not have been obvious because Ericsson did not prove that a skilled artisan would have had a reasonable expectation of success in combining the teachings of the ’480 patent and GSM 05.02. The GSM mobile communication standard is referenced in both the ’480 patent and the ’408 patent. According to the Board, Ericsson did not show that the "system of the ’480 patent could be modified to implement frequency mapping through re-programming of the DP RAM Enable 202 alone." However, the Federal Circuit pointed out that the ’480 patent states that Figure 6 is "[a] detailed diagram of the TDM FIFO receiver and that each TDM FIFO Receiver contains, in addition to other components, an instance of DP-RAM 202. IV’s expert testimony did not contradict this. Thus, the Board’s conclusion that mapping data to a specific DSP is not accomplished by the DP RAM Enable 202 depicted in Figure 6 was unsupported by substantial evidence.

Conclusion. Concluding that claim 1 is not patentable, the Federal Circuit reversed the Board’s decision as to claim 1, vacated the decision as to claims 2–16, and remanded for determination of patentability of claims 2–16.

Dissent. Circuit Judge Evan J. Wallach filed a dissenting opinion, arguing that in reversing the Board’s findings, the majority stepped out of its appellate role and improperly substituted its own factual findings for those of the Board. According to Judge Wallach, substantial record evidence supported the Board’s anticipation and obviousness determinations. "The majority errs by conducting a more exacting review than substantial evidence requires," Judge Wallace said. "The proper inquiry, however, is not how we would have interpreted the evidence in the first instance; it is whether substantial evidence supports the PTAB’s findings."

The case is No. 2016-1671.

Attorneys: Steven Garrett Spears (Baker & Hostetler LLP) and Gregory Matthew McCloskey (McDermott, Will & Emery LLP) for Ericsson Inc. and Telefonaktiebolaget LM Ericsson. Byron Leroy Pickard (Sterne Kessler Goldstein & Fox, PLLC) for Intellectual Ventures I LLC.

Companies: Ericsson Inc.; Telefonaktiebolaget LM Ericsson; Intellectual Ventures I LLC

MainStory: TopStory Patent FedCirNews

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