Unsupported Expert Opinion Will Not Overcome a Prior Art Reference in IPR

Ericsson appealed an IPR decision by the PTAB finding claims 1-16 of U.S. Patent No. 6,952,408 (“the ’408 patent”) to be not anticipated and nonobviousness.  On May 29, 2018, the Federal Circuit in Ericsson Inc. et al. v. Intellectual Ventures I LLC, No. 2016-1671 (Fed. Cir. May 29, 2018), reversed the PTAB’s findings with respect to claim 1, vacated its decision as to claims 2-16, and remanded for determination of patentability of claims 2-16.

The majority reviewed the agency’s findings of fact for substantial evidence, determining that a reference cited in the IPR provided a basis for anticipation and did not support a finding of nonobviousness. Further, the contradicting opinion of Intellectual Ventures’s (“IV”) expert was unsupported. The majority thus found that no substantial evidence supported the PTAB’s finding of no anticipation and nonobviousness, and determined that claim 1 was anticipated.

Judge Wallach authored a dissent explaining that the majority had stepped beyond its appellate role when reassessing the PTAB’s factual findings. Instead, the dissent stated that the majority should have only determined whether the PTAB’s factual finding could be supported by substantial evidence, rather than coming to its own finding of fact.