![\"Intellectual](\"https:\/\/i0.wp.com\/abovethelaw.com\/wp-content\/uploads\/2015\/10\/iStock_000044552904_Medium-300x200.jpg?resize=300%2C200&ssl=1\" "\\"\\"")
Welcome to 2025, which I hope will be a year of accomplishment and good health for the entire ATL readership. As patent litigation aficionados, is there a better way to start the year than to take a close look at the first Federal Circuit decision<\/a> released? I can\u2019t think of one, especially when the decision in question was deemed precedential \u2014 and had a dissenting opinion as well. Add in that the decision reiterated some important considerations on one of patent law\u2019s cardinal issues, obviousness, and it is clear that this first effort from the CAFC in 2025 is worth our attention. So let\u2019s dive in.<\/p>\nTo start, it helps to know the backstory of the patent that the CAFC considered on appeal. The patent owner and appellee, 3G Licensing S.A<\/a>., is a subsidiary of Sisvel, a well-known player in the patent monetization space. While the \u201c3G Joint Licensing Programme\u201d that 3G Licensing managed \u201cis no longer active\u201d according to Sisvel\u2019s website, Sisvel claims to still have over a dozen \u201cactive licensing programmes\u201d and over 1,500 patents owned. At issue in the appeal was the PTAB\u2019s 2022 decision upholding the validity of 3G\u2019s \u2018718 patent, which 3G had acquired from LG Electronics in February 2020. As is often the case with experienced patent monetization outfits, that acquisition was swiftly followed by assertion, in the form of a May 2020 complaint against Honeywell.<\/p>\n In response, Honeywell and other 3G licensing targets filed an IPR against the \u2018718 patent, arguing that there was \u201cnothing inventive about the encoding scheme claimed in the \u2019718 patent; rather, the basis sequences and mathematical operations claimed by LGE are a trivial, and obvious, modification of a prior art proposal by Koninklijke Philips N.V.\u201d According to the IPR petition, \u201cthe only difference between the prior art and the \u2019718 patent is that the last two bits of the last row of the basis sequences are flip-flopped,\u201d so that 98 out of 100 bits were identical between the basis sequences disclosed in the prior art and the \u2018718 patent. Still, the PTAB refused to find the \u2018718 patent obvious, leading to the CAFC appeal under discussion.<\/p>\n As characterized by the majority, the thrust of the \u2018718 patent involved methods for optimizing the accuracy of the information based from a cellphone to a base station regarding signal strength, characterized in the art as the Channel Quality Indicator or CQI. The more accurate the CQI information, the better the performance of the communication system. As with many other aspects of wireless communication, a standard formed around CQI transmission. In support of that effort, a decision was taken to extend the encoder length by four bits, raising the question of how best to handle that extension in a way that \u201cwould reduce the probability that transmission errors would result in large errors in the received channel quality value.\u201d<\/p>\n The initial solution to the question of how to avoid errors in CQI transmission was suggested by Philips, whose submitted proposal became the key prior art reference to the \u2018718 patent. For its part, LG filed a Korean application that led to the \u2018718 patent shortly after the publication of the Philips reference, whereby LG, \u201ctwo days after filing the Korean patent application \u2026 proposed a modification to the Philips reference flipping the last two digits in the table, as disclosed in the Korean patent application.\u201d That proposal was approved, so that the \u2018718 patent \u201ceffectively claimed the TGPP standard for encoding CQI.\u201d Needless to say, patents that claim standards are valuable, unless they are invalid.<\/p>\n With that background, the majority turned to its review of the PTAB\u2019s decision upholding the \u2018718 patent\u2019s validity, even as it \u201cacknowledged that the only difference between the Philips reference and the claim 1 was that the 1 and 0 in the last row of the basis sequences table were switched.\u201d In reversing the PTAB, the majority identified \u201cmultiple legal errors\u201d starting with the conclusion that one of skill in the art \u201cwould not have been motivated to modify the Philips reference to swap the bits to improve protection for the MSB because the \u2019718 patent\u2019s main objective was to maximize entire system throughput.\u201d Citing the seminal obviousness decision, KSR<\/i>, the majority upbraided the PTAB for forgetting \u201cthat the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.\u201d Next, the majority focused on the fact that even 3G\u2019s expert \u201cdid not dispute that swapping the last-row digits would increase protection to the MSB and instead simply disputed whether it was understood that doing so would have been desirable.\u201d As a result, the majority found that the PTAB\u2019s decision was \u201cnot supported by substantial evidence\u201d as it ignored the unrebutted expert opinion \u201cthat swapping the two digits in the basis sequence would repeat the MSB an additional time and provide increased protection to the MSB.\u201d<\/p>\n In addition, the majority took issue with the fact that the PTAB appeared to apply the stricter anticipation invalidity standard to the petition, rather than considering the arguments based on the obviousness standard that was actually argued. Likewise, the majority also criticized the PTAB\u2019s decision upholding validity to the the extent that it failed to \u201crecognize that the claimed modification needed only to be desirable in light of the prior art and not the \u2018best\u2019 or \u2018preferred\u2019 approach\u201d \u2014 with the Philips reference itself disclosing the motivation for the modification claimed in the \u2018718 patent.<\/p>\n In dissent, Judge Stoll agreed with the majority that the PTAB \u201cerroneously conflated obviousness with anticipation\u201d in evaluating the import of the Philips reference\u2019s failure to propose the two-bit swap disclosed in the \u2018718 patent. For Stoll, the proper disposition of the appeal would have been a remand to the PTAB, not the reversal entered by the majority. In her view, the majority\u2019s reversal overstepped the role of the appellate court, as the underlying case \u201cpresents a close factual dispute of whether Honeywell proved by preponderant evidence that a skilled artisan would have been motivated to swap the last two bits in Philips\u2019 basis sequence table without making other changes to the table\u201d \u2014 and the CAFC is not a fact finder. Instead, it is the job of the PTAB \u201cto make fact findings about what a person of ordinary skill in art would understand a prior art reference to teach in this case\u201d \u2014 a mandate that the majority took away with its reversal.<\/p>\n Ultimately, this decision highlights the continued importance of the CAFC in terms of policing the PTAB and making sure that its precedents are being followed on key issues like obviousness. At the same time, the dissent raises the question \u2014 not for the first time, as any CAFC watcher knows \u2014 of whether CAFC panels are too quick to make factual findings that support their desired conclusions, even when those actions conflict with principles of appellate review. We are just getting started in 2025 and there is already a strong example of obvious disagreement to digest.<\/p>\n Please feel free to send comments or questions to me at [email\u00a0protected]<\/a> or via Twitter: @gkroub<\/a>. Any topic suggestions or thoughts are most welcome.<\/p>\n Gaston Kroub lives in Brooklyn and is a founding partner of <\/strong><\/em>Kroub, Silbersher & Kolmykov PLLC<\/em><\/strong><\/a>, an intellectual property litigation boutique, and\u00a0<\/strong><\/em>Markman Advisors LLC<\/em><\/strong><\/a>, a leading consultancy on patent issues for the investment community. Gaston\u2019s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at\u00a0<\/strong><\/em>[email\u00a0protected]\u00a0<\/em><\/strong><\/a>or follow him on Twitter:\u00a0<\/strong><\/em>@gkroub<\/em><\/strong><\/a>.<\/strong><\/em><\/p>\n","protected":false},"excerpt":{"rendered":" 2025 is off to a rip-roaring start in the world of patent law! The post Obvious Disagreement appeared first on Above the Law. Welcome to 2025, which I hope will be a year of accomplishment and good health for the entire ATL readership. As patent litigation aficionados, is there a better way to start the […]<\/p>\n","protected":false},"author":0,"featured_media":99435,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"_et_pb_use_builder":"","_et_pb_old_content":"","_et_gb_content_width":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[16,17],"tags":[],"class_list":["post-99434","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-above_the_law","category-legal_matters"],"jetpack_featured_media_url":"https:\/\/i0.wp.com\/xira.com\/p\/wp-content\/uploads\/2025\/01\/iStock_000044552904_Medium-e1446146912557-mbsb2V.jpeg?fit=565%2C376&ssl=1","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts\/99434","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/types\/post"}],"replies":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/comments?post=99434"}],"version-history":[{"count":0,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts\/99434\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/media\/99435"}],"wp:attachment":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/media?parent=99434"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/categories?post=99434"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/tags?post=99434"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}
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