Federal Circuit: PTAB Improperly Relied on Unsupported Expert Opinion

Ericsson Inc. v. Intellectual Ventures I, LLC, No. 2016-1671, 2018 (Fed. Cir. May 29, 2018) (Before Prost, C.J., Newman, and Wallach, J.) (Opinion for the court, Newman, J.) (Dissenting opinion, Wallach, J.)

The ‘408 patent, owned by Intellectual Ventures I LLC (“IV”), covers a method of frequency hopping used in wireless systems in which a base station communicates with other entities on varying radio frequencies to reduce interference among communications. Ericsson petitioned for inter partes review of the ’408 patent, and the PTAB upheld its validity. Without separately analyzing the challenged dependent claims, the PTAB held that claim 1 was not anticipated or obvious. On appeal, the Federal Circuit reversed with respect to claim 1 and vacated and remanded as to the remaining claims.

The PTAB erred in finding that claim 1 was not anticipated by the prior art ‘480 patent, which also covers wireless communication technology. Each term of claim 1 of the ‘408 patent, including the preamble terms, was recited by the ‘480 patent. Both the diagrams and detailed descriptions of the preferred embodiments in both patents – the broadband base station – were substantially identical. While the ‘408 patent specification described additional components not present in the reference, any differences were not required by claim 1. Furthermore, “The PTAB acknowledged that there were relevant disclosures in the ’480 patent, but reasoned that the ’480 patent did not anticipate because frequency hopping was an “optional . . . functionality.” This did not disqualify the relevant disclosures.


The PTAB accepted the opinion of IV’s expert that, despite the apparent presence of the claimed combination in the prior art, the method described in the ’480 patent actually could not remap incoming data fast enough to support frequency hopping, as claimed, including maintaining the same logical channel throughout a call. The Court held that the PTAB’s findings were not supported by substantial evidence. In particular, the ‘480 patent stated that its base station supported “frequency hopping standards such as … GSM,” and IV’s expert conceded that “[o]ne has to keep the same logical channel to preserve a call.” The Court did not weigh evidence supporting IV’s position that the ‘480 patent did not enable the disputed ‘408 claims, and apparently it did not find any. On the contrary, it characterized this case as raising an issue of “technological evidence,” not witness credibility. It disregarded “the testimony of an expert that is plainly inconsistent with the record ….” Ultimately, each element of claim 1 was disclosed in the ‘480 patent, making claim 1 unpatentable as anticipated.

The PTAB also erred in finding that claim 1 of the ‘408 patent was not obvious in light of the ‘480 patent and the GSM reference, a mobile communication standard cited in both the ‘480 patent and the ‘408 patent. The PTAB’s finding that Ericcson did not prove a reasonable expectation of success was not supported by substantial evidence.

In his dissent, Judge Wallach reiterated that a court reviewing an agency’s adjudicative action should accept the agency’s factual findings if these are supported by substantial evidence. Judge Wallach thought the majority improperly substituted its own factual findings for those of the PTAB instead of acknowledging that substantial evidence supported the PTAB’s decision.

Take Away

Substantial evidence did not support a PTAB ruling that relied on “the testimony of an expert that is plainly inconsistent with the record.”


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Join the Discussion

5 comments so far.

  • [Avatar for Anon]
    June 13, 2018 11:46 am


    I am saying something different.

    Close – but different.

    That being said, I think that if you couple what you are saying and add in the piece provided by EG (on another thread, EG provided that the formation of the CAFC originally did not include patent appeals to the Supreme Court), one WOULD be in a state of advancing to the past in order to CORRECT the mistakes not learned from the even further past (and why in particular Congress finally fed up with the anti-patent Supreme Court of the 1930s and 1940s changed patent law with the Act of 1952.

    (I also hasten to add that the current CAFC is SO browbeaten by the Supremes as to be worthless for its original charted duty)

  • [Avatar for Eric Berend]
    Eric Berend
    June 13, 2018 12:31 am

    @ 3. ‘Anon’:

    So, in essence, this aspect of the legal domain of ‘patent law’ regarding official courts of review, is now back to the late 1970’s/early 1980’s era that saw the formation of the CAFC; e.g., the Federal Courts Improvement Act of 1982.

    What was old, is now new again.

    “Back to the Future” – err, ‘Advance to the Past’??

  • [Avatar for Anon]
    June 10, 2018 04:01 pm

    The current CAFC is an uncontrolled mess – you have a lot of “ping – pong – ping” going on with the “luck of the panel.”

    As I have noted previously, this too is the fault (at least partially) of the Supreme Court who have taken it above themselves to beat silly the CAFC on most anything patent such that the body explicitly formed by Congress in order to bring stability to patent law is now but a faint reflection of the Supreme Court itself, and there is no stability to be found.

    This too is why when I provide my advocacy for Congress to exercise its own Constitutional power to employ jurisdiction stripping and remove the non-original jurisdiction of patent appeals from the Supreme Court, that Congress will also need to create a new lower Article III court (to preserve judicial review under Marbury) that is NOT the current brow-beaten court.

  • [Avatar for Disenfranchised Patent Owner]
    Disenfranchised Patent Owner
    June 10, 2018 09:58 am

    “The Court held that the PTAB’s findings were not supported by substantial evidence.”
    “The PTAB’s finding that Ericcson did not prove a reasonable expectation of success was not supported by substantial evidence.”

    WOW! So, in order to invalidate patents that survive the PTAB Death Squad, upon appeal CAFC looks for supporting substantial evidence?

    But, when the Squad kills patents without substantial evidence (and/or with substantial opposing evidence), CAFC affirms by Rule 36.

    Curious… or thus it seems.

  • [Avatar for Tim]
    June 10, 2018 08:10 am

    After Vringo vs IP Internet, I’m surprised that Wallace isn’t living on Google Island with his buddy, Mayer. Both should have been investigated, as Judge Chen highly dissented their “throwing the case”. Chen was the only one of the 3 that was qualified for that case. How did Obama/Google get to them?