Federal Circuit Summaries

Before Prost, Newman, and Wallach. Appeal from the Patent Trial and Appeal Board.

Summary: An unsupported expert opinion does not constitute substantial evidence to contradict a prior art reference.

Ericsson petitioned for inter partes review of IV’s U.S. Pat. No. 6,952,408, directed to a method of frequency hopping. In its final written decision, the PTAB ruled that claim 1 is neither anticipated nor obvious, and did not separately analyze dependent claims 2-16.

The Federal Circuit reversed with regard to anticipation of claim 1 and vacated and remanded the decision as to the patentability of the remaining claims. The Court found unsupported expert testimony insufficient to contradict the anticipatory disclosure of a prior art reference, stating that “[t]o contradict a reference, an unsupported opinion is not substantial evidence.” Because it found each element of claim 1 was disclosed in the prior art reference, the Federal Circuit held that claim 1 was unpatentable as anticipated.

Judge Wallach dissented, stating that a court reviewing an agency’s adjudicative action should accept the agency’s factual findings if they are supported by substantial evidence. Judge Wallach stated that substantial evidence supports the PTAB’s determination that the challenged claims are not anticipated, and that the majority improperly substituted its own factual findings for those of the PTAB.