In reviewing a final written decision from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit ruled that an unsupported opinion is not sufficient to constitute substantial evidence for the purposes of contradicting anticipatory disclosure of a prior art reference. Ericsson Inc. v. Intellectual Ventures I LLC, Case No. 16-1671 (Fed. Cir., May 29, 2018) (Newman, J) (Wallach, J, dissenting).
In connection with an inter partes review (IPR) proceeding, the PTAB ruled that independent claim 1 of the challenged patent, relating to "frequency hopping" in wireless communication systems, was not anticipated by a prior art reference presented by Ericsson. Intellectual Venture's (IV's) expert stated that the method described in the prior art reference did not teach each and every element of claim 1, and the PTAB relied on this statement to conclude that the claim was not anticipated or obvious. According to IV's expert, "the method described in the [prior art] cannot remap the incoming data fast enough to support frequency hopping," and frequency hopping was an "optional . . . functionality" in the prior art. The PTAB did not separately analyze the remaining challenged (dependent) claims in its final written decision. Ericsson appealed.
The Federal Circuit noted that "[e]ach term of claim 1, including the terms of the preamble, is recited in the [prior art reference]," and found the assertion by IV's expert to be an unsupported opinion that did not constitute substantial evidence to contradict the reference.
The Court also found that the PTAB erred in its obviousness analysis with respect to claim 1 because the "experts were in agreement that a person having ordinary skill in the field would have known how to implement frequency hopping." Because dependent claims 2–16 were not separately analyzed, the PTAB's decision as to those claims was also vacated for reconsideration on remand.
In dissent, Judge Wallach noted that a court reviewing an adjudicating agency's decision should defer to the factual findings of the agency if they are supported by substantial evidence: "The court should not supplant the agency's findings merely by identifying alternative findings that could be supported by substantial evidence." In Wallach's view, the majority "improperly substitute[d] its own factual findings for those of the PTAB."
Unsupported Expert Testimony Is Not Substantial Evidence
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