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Ericsson Inc. v. Intellectual Ventures I LLC

United States Court of Appeals, Federal Circuit

May 29, 2018

ERICSSON INC., TELEFONAKTIEBOLAGET LM ERICSSON, Appellants
v.
INTELLECTUAL VENTURES I LLC, Appellee

          Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-00963.

          Steven Garrett Spears, Baker & Hostetler LLP, Houston, TX, argued for appellants. Also represented by Gregory Matthew McCloskey, McDermott, Will & Emery LLP, Boston, MA.

          Byron Leroy Pickard, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellee. Also represented by Lori A. Gordon, Ross G. Hicks, Michael D. Specht.

          Before Prost, Chief Judge, Newman and Wallach, Circuit Judges.

          OPINION

          Newman, Circuit Judge

         Ericsson Incorporated and Telefonaktiebolaget LM Ericsson (collectively, "Ericsson") appeal the decision of the Patent Trial and Appeal Board ("PTAB") on inter partes review, in which Ericsson is the Petitioner and Intellectual Ventures I LLC ("IV") is the Patent Owner. The PTAB sustained the patentability of claims 1-16 of U.S. Patent No. 6, 952, 408 ("the '408 patent").[1]

         We conclude that the PTAB erred in its decision with respect to claim 1, the only claim whose patentability was analyzed by the PTAB. We reverse as to claim 1, vacate as to claims 2-16, and remand for determination of patentability of claims 2-16.

         Standards of Review

         PTAB decisions are reviewed in accordance with the Administrative Procedure Act, 5 U.S.C. § 706(2). Agency findings of fact are reviewed for support by substantial evidence in the agency record, and agency rulings of law are reviewed for correctness in accordance with law. See In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

         "Anticipation" in patent terms means that the claimed invention is not new; that is, the invention as claimed was already known. Anticipation is a question of fact, and a finding of anticipation requires that every limitation of the claim is present in a single prior art reference. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016); In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).

         "Obviousness" is a matter of law based on underlying factual findings, and is grounds for unpatentability when the claimed subject matter is not identically described, if the subject matter as a whole would have been obvious to a person having ordinary skill in the field of the invention. 35 U.S.C. § 103(a); see KSR Int'l, Inc. v. Teleflex, Inc., 550 U.S. 398, 406-07 (2007). When obviousness is based on information from a combination of sources, the question is whether a person of ordinary skill in the field would have been motivated to select and combine this information, and with a reasonable expectation of achieving the desired result. See, e.g., Merck & Cie v. Gnosis S.p.A., 808 F.3d 829, 833 (Fed. Cir. 2015), cert. denied, 137 S.Ct. 297 (2016).

         The '408 Patent - Institution and Final Decision

         The '408 patent is 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. The '408 patent's "Abstract" describes the method as follows:

A method of frequency hopping is supported by a basestation having a broadband transceiver. The method permits changing physical channels upon which mobile subscribers communicate with the basestation, wherein the broadband transceiver is operated using static transceiver frequencies, the method exclusive of switching communication signals between transceivers. In one embodiment, the method maps baseband output signals from a digital channelizer which represent physical channels to ones of digital signal processors representing logical channels and baseband input signals of a digital combiner to ones of logical outputs of digital signal processors according to a mapping signal.

'408 patent, at [57]. The PTAB effectively defined "frequency hopping" as "changing from a first of said physical RF [radio frequency] channels upon which said mobile subscribers communicate with said basestation to a second of said physical RF channels, while maintaining a same logical channel." PTAB Dec. at 3-4, 19. The parties agree with this definition. See J.A. 1049 (declaration of Dr. Stark, Ericsson's expert); J.A. 3327 (declaration of Dr. Wells, IV's expert).

         Figure 1 is "a preferred embodiment, " of the '408 patent method, "a block diagram of a wideband digital basestation making use of a time division multiplex (TDM) bus according to the invention":

         (Image Omitted)

         '408 patent, Fig. 1; col. 3, ll. 46-48; col. 4, ll. 12-13. The "Detailed Description of a Preferred Embodiment" further describes the basestation and mobile subscribers, and refers to the European GSM [Global System for Mobile Communications] frequency hopping standard:

More particularly, the basestation 10 exchanges radio frequency (RF) signals with a number of mobile subscriber terminals (mobiles) 40a, 40b. The RF carrier signals are modulated with voice and/or data (channel) signals which are to be coupled to the public switched telephone network (PSTN) by the basestation 10. The particular modulation in use may be any one of a number of different wireless (air interface) standards such as . . . frequency hopping standards such as the European GSM, personal communication network (PCN) standards, and the like.

'408 patent, col. 4, ll. 36-48.

         Claim 1 of the '408 patent is as follows:

1. A method for frequency hopping in a cellular communications system having multiple mobile subscribers communicating on a plurality of different physical RF channels on any time division multiplexed scheme with a basestation having a broadband transceiver, said method comprising the steps of:
operating said broadband transceiver using a plurality of transceiver RF frequencies, each of which represents one of said physical RF channels; and
changing from a first of said physical RF channels upon which said mobile subscribers communicate with said basestation to a second of said physical RF channels, while maintaining a same logical channel.

'408 patent, col. 13, ll. 15-28. Claims 2-16 depend successively from claim 1, each with additional limitations.

         Ericsson petitioned for inter partes review of all claims. The PTAB instituted review of all claims, on two grounds:

1) anticipation of claims 1-10 and 12-16 under § 102(b) by U.S. Patent No. 5, 592, 480 ("the '480 patent");
(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").[2]

PTAB Dec. 3.

         Both sides presented argument and expert testimony. The PTAB ruled that claim 1 is neither anticipated nor obvious. The PTAB did not separately analyze dependent claims 2-16, and ruled that Ericsson had "not demonstrated, by a preponderance of the evidence, that any of claims 1-16 is anticipated by the '480 patent or obvious over the '480 patent, GSM 05.02, and the '435 patent." Id. at 33. The PTAB held all 16 claims patentable, and adhered to this decision on reconsideration.

         In view of the PTAB's limitation of its analysis to claim 1, our review is focused on claim 1. See Michigan v. EPA, 135 S.Ct. 2699, 2710 (2015) (reciting the "foundational principle of administrative law that a court may uphold agency action only on the grounds that the agency invoked when it took the action" (citing S.E.C. v. Chenery Corp., 318 U.S. 80, 87 (1943)).

         In brief, Ericsson argues that claim 1 is a "generic" statement of the known method of frequency hopping implemented at broadband basestations. Ericsson states that all the limitations of claim 1 are shown in the '480 patent, and that claim 1 is no more than a broad recitation of the general method of frequency hopping in mobile communications, as disclosed in the '480 patent in general terms. Ericsson states that if any additional content in the '408 specification may serve to distinguish the '480 patent, such content is not present as a limitation to claim 1. Thus Ericsson argues that claim 1 is anticipated by the '480 patent or is obvious from the '480 patent in combination with the GSM reference.

         I

         The Prior Art

         The '480 Patent

         The PTAB described the '408 and '480 patents as "not related, " but "shar[ing] significant disclosure." PTAB Dec. 10. The '480 patent presents the following "Abstract":

A wireless communication system basestation making use of a wideband, multichannel digital transceiver having incorporated therein a time division multiple-access (TDM) bus for providing digital samples of a plurality of wireless communication channels, wherein the time slot duration and frame rate of the TDM bus may be reconfigured. The invention allows various air interface standards, even those having different channel bandwidths, to be serviced by the same basestation, without having to install additional or different equipment, and by automatically redistributing signal processing resources, eliminating the need to reconfigure the basestation when different types of wireless signaling must be accommodated.

'480 patent, at [57].

         In Figure 1, the '480 patent shows "a preferred embodiment" as a "block diagram of a wideband digital basestation making use of a time division multiplex (TDM) bus according to the ...


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