Patent on cell phone radio not obvious because no motivation to combine. APPLE v. INVT

After a patent is granted it is still subject to review. The America Invents Act introduced inter partes review, which is a method to get a patent declared invalid. Inter partes review is a trial proceeding conducted at the Patent Trial and Board (PTAB) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

Inter partes review is a quasi judicial proceeding performed by the PTAB. This means that there are certain formalities that must be followed. One of those formalities is that all decisions of the PTAB must be explained and supported by the evidence. Final decision of the PTAB are reviewed by the Court of Appeals for the Federal Circuit. Obviousness is a question of law with underlying factual findings relating to the scope and content of the prior art; differences between the prior art and the claims at issue; the level of ordinary skill in the pertinent art; the presence or absence of a motivation to combine or modify prior art with a reasonable expectation of success; and any objective indicia of non-obviousness.

The Federal Circuit reviews the PTAB’s obviousness conclusion de novo and its factual findings for substantial evidence. Studying case law is a practical way to gain an understanding of when the facts of a case will lead a court to conclude that a patent is obvious.

APPLE INC., HTC CORP, v. INVT SPE LLC, 20-1859 (C.A.F.C. 2021) is an example of a case where a patent was not considered obvious because there was no motivation to combine the prior art.

Apellee in this case owns U.S. Patent No. 6,611,676. The ‘676 patent is directed to a radio communications system with a variable transmission rate. In the past, when a radio communications system encountered low reception quality, it would compensate by increasing transmission power. This could lead to increased interference. The ’676 patent teaches decreasing the transmission rate of the radio signal, which improves reception quality without increasing interference with other mobile devices.

Appellants petitioned for inter partes review of the patent on the grounds it would have been obvious over Keskitalo in view of Lindell. Keskitalo discloses improving reception quality in a CDMA system by adjusting the spreading ratio. Lindell discloses a radio transmitter power controller that automatically restricts transmission power when the average power approaches or exceeds a predetermined limit.

The Patent Trial and Appeal Board found the ‘676 patent was not obvious because there was no motivation for a skilled artisan to combine Keskitalo with Lindell. Appellants appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit noted that Keskitalo and Lindell both involve measuring transmission power, they do so for different reasons, on different time scales, and compare the results to different thresholds. Given these functional differences the Federal Circuit found that a reasonable fact finder could conclude there was no motivation to combine the references. Appellants argued that the PTAB erred by misconstruing their proposed combination of the references. The Federal Circuit was not persuaded by this argument because if found that the PTAB’s decision demonstrated that it had a firm grasp of the appellant’s argument. The Federal Circuit concluded that substantial evidence supported the PTAB’s finding of no motivation to combine the prior art and affirmed the PTAB’s determination that appellant failed to prove the patent was obvious.

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