Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Honeywell International Inc., et al. v. 3G Licensing, S.A., Nos. 2023-1354, -1384, -1407 (Jan. 2, 2025), reversing the Patent Trial and Appeal Board’s final written decision declining to hold the challenged claims from U.S. Patent No. 7,319,718 (the “‘718 patent”) unpatentable as obvious.
Honeywell International Inc., Telit Cinterion Deutschland GmbH, and Sierra Wireless, ULC (collectively, “Honeywell”) filed a petition for inter partes review (“IPR”) contending that the challenged claims of the ’718 patent are unpatentable as obvious over certain prior art references. The Board instituted the IPR and, in a final written decision, declined to hold any of the challenged claims unpatentable as obvious.
The Federal Circuit reversed. Writing for the majority, Judge Dyk stated that the Board improperly (1) based its conclusion of nonobviousness on its finding that the ’718 patent’s primary motivation was to “focus[ ] on system throughput” rather than to minimize root-mean-square error or bit error rate in contravention of well-established precedent such as the Supreme Court’s decision in KSR, which held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had; (2) overlooked the unrebutted testimony from Honeywell’s expert witness, which contradicted the Board’s finding that Honeywell had not sufficiently shown that a person of ordinary skill in the art would have been motivated to modify the prior art; (3) conflated the relevant standards for obviousness and anticipation by giving weight to the fact that the Philips prior art reference did not explicitly propose swapping the last two bits of the last row of its basis sequence table; and (4) found that there was an insufficient motivation to modify the prior art because of uncertainty as to what is the “preferred” approach when well-settled Federal Circuit precedent “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”
Judge Stoll dissented noting that although she agreed with Part III of the majority’s conclusion, this conclusion should result in vacating the Board’s decision versus reversing the Board’s decision. According to Judge Stoll, the majority’s decision was a “departure from the [CAFC’s] role as an appellate court.”
