Intellectual Ventures II LLC v. Ericsson Inc. ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES II LLC,
Appellant
v.
ERICSSON INC., TELEFONAKTIEBOLAGET LM
ERICSSON,
Appellees
______________________
2016-1803
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in No. IPR2014-
01195.
______________________
Decided: April 18, 2017
______________________
SHARON HWANG, McAndrews, Held & Malloy, Ltd.,
Chicago, IL, argued for appellant. Also represented by
PETER J. MCANDREWS, RAJENDRA A. CHIPLUNKAR,
STEPHANIE SAMZ.
J. ANDREW LOWES, Haynes & Boone, LLP, Richardson,
TX, argued for appellees. Also represented by CLINT S.
WILKINS; DEBRA JANECE MCCOMAS, Dallas, TX.
______________________
2 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
Before LOURIE, REYNA, and STOLL, Circuit Judges.
LOURIE, Circuit Judge.
Intellectual Ventures II LLC (“IV”) appeals from the
written decision of the United States Patent and Trade-
mark Office (“PTO”) Patent Trial and Appeal Board (“the
Board”) in an inter partes review (“IPR”) proceeding
concluding that claims 1 and 2 of U.S. Patent 7,787,431
(“the ’431 patent”) are unpatentable as obvious. Ericsson
Inc. v. Intellectual Ventures II LLC, IPR 2014-01195, 2016
WL 380219 (P.T.A.B. Jan. 29, 2016) (“Final Decision”).
Because the Board did not err in concluding that claims 1
and 2 are unpatentable, we affirm.
BACKGROUND
IV owns the ’431 patent, which describes a variable-
bandwidth wireless communication system. See ’431
patent, col. 3 l. 7–col. 5 l. 7. According to the patent,
different countries use different segments (or “bands”) of
the electromagnetic spectrum for wireless communica-
tions. Id. col. 1 ll. 34–36. Moreover, different wireless
operators can “own and operate on a broadband spectrum
that is different in frequency and bandwidth from other
operators.” Id. col. 1 ll. 36–39. Thus, a single wireless
device must be capable of transmitting and receiving
multiple bandwidths if it is to be used in areas or systems
that require different bandwidths. Id. col. 1 ll. 30–42.
The ’431 patent purports to allow for a wireless device
to communicate in systems or regions with different
communication schemes that require different band-
widths. In particular, the patent describes a “core band”
in which basic communication signals are transmitted.
Id. col. 4 l. 67–col. 5 l. 25. The core band is “substantially
centered at the operating center frequency” of the differ-
ent communication schemes, id. col. 5 l. 1, and may be
used by a particular communication system to transmit a
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 3
preamble that identifies the bandwidth used by that
system, id. col. 6 ll. 4–32. The device can then adjust its
signal accordingly. Id. col. 4 ll. 25–35. Moreover, the core
band is described as “not greater than the smallest oper-
ating channel bandwidth among all the possible spectral
bands that the receiver is designed to operate with.” Id.
col. 5 ll. 2–4. Claim 1 reads:
1. In a variable bandwidth wireless communica-
tion system communicating under multiple differ-
ent communication schemes that each have a
different bandwidth, a process performed by a
base station of generating an information bearing
signal for wireless transmission, the process com-
prising:
utilizing by the base station a number of
subcarriers to construct a variable band-
width wireless channel;
utilizing by the base station groups of sub-
carriers, wherein each group includes a
plurality of subcarriers;
maintaining a fixed spacing between adja-
cent subcarriers;
adding or subtracting, by the base station,
groups of subcarriers to scale the variable
bandwidth wireless channel and achieve
an operating channel bandwidth; and
wherein a core-band, including a plurality of
subcarrier groups, substantially centered
at an operating center frequency of the dif-
ferent communication schemes, is utilized
by the base station as a broadcast channel
carrying radio control and operation sig-
nalling, where the core-band is substan-
tially not wider than a smallest possible
4 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
operating channel bandwidth of the sys-
tem; and
wherein the information bearing signal has a
primary preamble sufficient for basic radio
operation and wherein:
the primary preamble is a direct sequence in
the time domain with a frequency content
confined within the core-band, or is an or-
thogonal frequency-divisional multiplex-
ing (OFDM) symbol corresponding to a
particular frequency pattern within the
core-band; and
wherein properties of the primary preamble
comprise:
an autocorrelation having a large correlation
peak with respect to sidelobes;
a cross-correlation with other primary pre-
ambles having a small cross-correlation
coefficient with respect to power of other
primary preambles; and
a small peak-to-average ratio; and
wherein a large number of primary preamble
sequences exhibit the properties.
Id. col. 9 l. 33–col. 10 l. 2 (emphases added). Claim 2 adds
that the information-bearing signal is an “orthogonal
frequency division multiple access (OFDMA) signal,” and
is used in a downlink with particular features. See id. col.
10 ll. 3–9.
Ericsson Inc. and Telefonaktiebolaget LM Ericsson
(together, “Ericsson”) filed a petition for IPR of the ’431
patent, alleging that claims 1, 2, 8–12, and 18–22 were
unpatentable as obvious over various combinations of
references. The Board ultimately instituted review of
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 5
only claims 1 and 2. Ericsson Inc. v. Intellectual Ventures
II LLC, IPR 2014-01195, 2015 WL 5565070, at *8–9
(P.T.A.B. Feb. 4, 2015) (“Institution Decision”). Specifical-
ly, the Board instituted review of whether the claims
would have been obvious over (1) U.S. Patent 6,904,283
(“Li”), which describes a variable-bandwidth communica-
tions system, see J.A. 721–44; (2) U.S. Patent 7,782,750
(“Yamaura”), which describes a communications system in
which controls signals are communicated in a particular
band of an OFDM system using preambles, see J.A. 745–
87; (3) U.S. Patent 7,426,175 (“Zhaung”), which describes
pilot signals with particular properties at the beginning of
communications, resulting in improved correlation, see
J.A. 788–96; and (4) a technical report describing a uni-
versal mobile telecommunications system with a core
band equal to the width of the smallest operating channel
(“Beta”), 1 see J.A. 830, 1003–29. 2
In its written decision, the Board concluded that
claims 1 and 2 are unpatentable as obvious over the
combination of Li, Yamaura, Zhaung, and Beta. First, the
Board determined that claim 1’s requirement that the
core band be “substantially not wider” than a smallest
operating channel was a term of approximation, and not
of magnitude, and so would be met by a core band that
was the same size as the operating channel. Final Deci-
1 The Board’s opinion refers to Beta as “UTRA.”
See Final Decision, 2016 WL 380219, at *3.
2 The Board also instituted review of claims 1 and 2
based on a combination of six references, and later deter-
mined that the six-reference combination also rendered
claims 1 and 2 unpatentable as obvious. Final Decision,
2016 WL 380219, at *11–12. Because we affirm the
Board’s conclusion based on the combination of Li,
Yamaura, Zhaung, and Beta, we need not, and do not,
reach the second combination.
6 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
sion, 2016 WL 380219, at *5–6. The Board thus rejected
IV’s argument that “substantially not wider” meant
“significantly narrower than,” although the Board deter-
mined that no explicit construction was necessary. Id. at
*6.
The Board then turned to Ericsson’s proposed combi-
nation of references. First, the Board determined that
Ericsson had adequately alleged reasons why a skilled
artisan would have combined Li and Yamaura, rejecting
IV’s argument that Ericsson could not rely for claims 1
and 2 on arguments it had made in its petition relating to
similar, but not identical, claims. Id. at *7. Specifically,
the Board determined that although claims 1 and 2 had
different limitations, Ericsson proposed combining the
same teachings from Li and Yamaura to teach similar
features of the claims. Id. Thus, the Board concluded
that IV had sufficient notice of, and an opportunity to
respond to, Ericsson’s proposed combination. Id.
The Board next found that a skilled artisan would
have been motivated to combine Li and Yamaura, as the
references were directed to “complementary aspects of
wireless communication systems.” Id. at 8. In particular,
the Board found that a skilled artisan would have looked
to improve Li’s controlling and signaling by implementing
Yamaura’s use of control and synchronization channels to
exchange information before establishing communica-
tions. Id. In so doing, the Board stated that it considered
the testimony of both IV and Ericsson’s experts, and
credited Ericsson’s expert. Id. The Board also found that
IV did not contest that there would have been a motiva-
tion to combine Li and Beta. Id.
The Board then addressed the manner in which Er-
icsson presented its argument that a skilled artisan would
have been motivated to combine the references. The
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 7
Board noted that Ericsson did not make a specific argu-
ment relating to why a skilled artisan would have com-
bined Yamaura and Beta, but found that because a skilled
artisan would have been motivated to combine Li with
Yamaura and Li with Beta, there would have been a
motivation to combine the teachings of Yamaura and Beta
through Li. Id. The Board rejected IV’s argument that
establishing a motivation to combine in that manner was
improper, reasoning that “[t]here is no per se rule that
requires each subset of prior art references to be inde-
pendently combined.” Id.
Finally, the Board found that there would have been a
motivation to combine Yamaura’s preambles with
Zhaung’s method of improving correlation of preambles
because the combination would have involved applying a
known technique to achieve a predictable result. Id. at
*8–9. The Board rejected IV’s argument that the combi-
nation would have rendered the pilot symbols used by Li
inoperable, because Ericsson’s proposed combination only
involved the use of Li’s variable bandwidth system, and
not Li’s pilot symbols. Id. at *9.
On the merits, the Board found that the combination
of Li and Yamaura disclosed or suggested the required
core band substantially centered at an operating frequen-
cy. Specifically, the Board found that Yamaura disclosed
a centered control channel, and Li disclosed a variable
bandwidth system. Id. at *9. The Board then credited
Ericsson’s expert to find that it would have been desirable
and within the capabilities of a skilled artisan to combine
the two in a way that ensured that Yamaura’s control
signals remained substantially centered. Id. The Board
also rejected IV’s argument that Yamaura’s core band was
not “substantially not wider” than the operating channel
bandwidth, as it relied on the definition that the Board
had rejected. Id.
8 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
Based on those findings, the Board concluded that
Ericsson had proven that claims 1 and 2 are unpatentable
as obvious. Id. at *11–12. IV timely appealed. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual determinations for sub-
stantial evidence and its legal determinations de novo.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015). Obviousness is a question of law based on
subsidiary findings of fact 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, and any objective indicia of non-
obviousness.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007)). Whether there would have been a
motivation to combine multiple references is also a ques-
tion of fact. S. Ala. Med. Sci. Found. v. Gnosis S.P.A., 808
F.3d 823, 826 (Fed. Cir. 2015). Accordingly, we review
these findings for substantial evidence. Allied Erecting &
Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
1373, 1380 (Fed. Cir. 2016). A finding is supported by
substantial evidence if a reasonable mind might accept
the evidence as sufficient to support the finding. Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
IV’s first argument challenges Ericsson’s general
approach to the obviousness analysis, which was adopted
by the Board. Rather than providing individual motiva-
tions to combine Li with Yamaura, Li with Beta, and
Yamaura with Zhaung, IV argues, Ericsson had to offer a
rationale for combining each reference with each other
reference, or all of the references together. Further, IV
argues that Ericsson had to establish a motivation to
combine Yamaura with Beta, rather than arguing that
because there would have been a motivation to combine Li
with both Yamaura and Beta separately, there would
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 9
have been a motivation to combine all three together. By
accepting Ericsson’s “pairwise” combination of references,
IV contends, the Board’s analysis became infected by
impermissible hindsight.
Ericsson responds that there was nothing improper
about the manner in which it presented evidence relating
to the motivation to combine. Ericsson contends that
because the approach to obviousness is “expansive and
flexible,” Ericsson’s Br. 26 (quoting KSR, 550 U.S. at 415),
the Board’s analysis was acceptable in light of the evi-
dence and arguments presented.
We agree with Ericsson that there was nothing inher-
ently improper with the evidence presented or the Board’s
analysis. KSR rejected “rigid and mandatory formulas” in
analyzing obviousness, 550 U.S at 419, and our decisions
following KSR have reflected that “[t]he determination of
obviousness is dependent on the facts of each case,” Sano-
fi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1089 (Fed.
Cir. 2008). For example, we have held that “[a] claimed
invention may [have been] obvious even when the prior
art d[id] not teach each claim limitation, so long as the
record contains some reason why one of skill in the art
would [have] modif[ied] the prior art to obtain the claimed
invention.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335
(Fed. Cir. 2016). Similarly, we have explained that the
obviousness analysis need not always be supported by
expert opinions, as in some cases “the technology will be
easily understandable without the need for expert ex-
planatory testimony.” Perfect Web Techs., Inc. v. InfoU-
SA, Inc., 587 F.3d 1324, 1330 (Fed Cir. 2009) (quoting
Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1369
(Fed. Cir. 2004)).
Thus, our precedent establishes that, consistent with
KSR, there is no single formula or approach that must
mechanically be followed to determine whether a claimed
invention would have been obvious. Here, the Board
10 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
articulated reasons why a skilled artisan would have
combined the references to arrive at the contested fea-
tures, see Final Decision, 2016 WL 380219, at *7–10, and
its ultimate conclusion of obviousness is directed to the
claims as a whole, id. at *1, *7, *12. Thus, on the facts of
this case, we find no error in the Board’s approach.
IV also contends that the Board’s erroneous approach
led to errors on the merits of the motivation-to-combine
analysis. Specifically, IV argues that not requiring a
rationale to combine all four references together allowed
Ericsson to rely on references that are directed to differ-
ent aspects of wireless communications and do not ad-
dress the problem that motivated the inventor of the ’431
patent. Ericsson responds that the problem motivating
the inventor is irrelevant to the obviousness analysis.
We agree with Ericsson that the references used to es-
tablish that a claim would have been obvious need not be
directed to the same problem that the inventor was trying
to solve. Indeed, in KSR the Supreme Court explicitly
stated that “neither the particular motivation nor the
avowed purposed of the patentee controls” the determina-
tion whether a claimed invention would have been obvi-
ous. 550 U.S. at 419. Thus, whether the cited references
are directed to the same problem that the inventor was
trying to solve is not conclusive concerning the obvious-
ness analysis. IV’s other argument essentially challenges
the motivation to combine the cited references; we ad-
dress those arguments in detail infra.
IV next argues that the Board’s method of analyzing
the motivation to combine allowed it to ignore IV’s argu-
ment that the combination would have rendered Li inop-
erable for its intended purpose. According to IV, it
presented evidence that Li’s pilot signals communicate
bandwidth allocation information to mobile stations,
while Zhaung’s pilot sequences do not convey such infor-
mation. Accordingly, IV contends, replacing Li’s pilot
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 11
signals with Zhaung’s pilot sequences would result in a
system that was unable to convey the status of available
bandwidth and, therefore, unable to provide variable
bandwidth. As Ericsson did not rebut this evidence, IV
argues that the Board’s decision should be reversed.
Ericsson responds that the Board’s decision was not
erroneous because it never argued that Li’s pilot signals
would be replaced by Zhaung’s pilot sequences. Instead,
Ericsson contends that it argued that Yamaura, together
with Zhaung, disclosed preambles with particular proper-
ties, and that a skilled artisan would have been motivated
to add those preambles to Li’s variable-bandwidth system.
Therefore, Ericsson argues, IV’s assertions are based on
an incorrect premise.
We agree with Ericsson that there was no error in the
Board’s analysis. The Board’s opinion shows that it did
not ignore IV’s inoperability argument; instead, the Board
considered and rejected that argument. Final Decision,
2016 WL 380219, at *9. Moreover, “it is well-established
that a determination of obviousness based on teachings
from multiple references does not require an actual,
physical substitution of elements.” In re Mouttet, 686
F.3d 1322, 1332 (Fed. Cir. 2012). Instead, the relevant
question is “what the combined teachings of the refer-
ences would have suggested to those having ordinary skill
in the art.” Id. at 1333. The Board’s rejection of IV’s
inoperability argument, see Final Decision, 2016 WL
380219, at *9, comports with those directions. Ericsson
proposed that a skilled artisan would have been motivat-
ed to add the properties of Zhaung’s pilot signals to
Yamaura’s preambles, and would have been similarly
motivated to add those preambles to Li’s variable-
bandwidth system. See J.A. 243–53. As Ericsson did not
propose combining the particular features that IV argues
would have led to an inoperable result, there was no
reversible error in the Board’s decision.
12 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
IV next argues that the Board’s rationale for combin-
ing Li and Yamaura is legally and factually incorrect. IV
first argues that the Board improperly relied on Ericsson’s
arguments relating to claim 8 in arguing that a skilled
artisan would have been motivated to create the invention
of claim 1, even though the two claims are different. IV
argues that we can review this issue because it is chal-
lenging the Board’s ultimate conclusion of obviousness,
rather than its institution decision. See In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1374 (Fed. Cir. 2016).
Ericsson responds that IV’s complaints are essentially
a challenge to the Board’s decision to institute review,
which is unreviewable. See Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2141 (2016). Even if it can be re-
viewed, Ericsson contends that its petition provided
reasons to combine Li and Yamaura that applied across
all of the claims, and that IV was provided fair notice and
an opportunity to respond.
We agree with IV that we can review the Board’s
ultimate decision whether Ericsson presented sufficient
evidence to establish that a skilled artisan would have
been motivated to combine Li and Yamaura. Magnum Oil
makes clear that we can review all “arguments regarding
the basis for the Board’s ultimate judgment of unpatenta-
bility,” 829 F.3d at 1374, and here IV is challenging
whether Ericsson provided sufficient evidence of a moti-
vation to combine the references.
We agree with Ericsson, however, that there was
nothing improper about the Board relying on arguments
that Ericsson incorporated from its treatment of claim 8
into its treatment of claim 1. In presenting its contention
that claim 1 would have been obvious, Ericsson both made
independent arguments and, where the claim limitations
were essentially the same, referenced its earlier argu-
ments relating to claim 8. J.A. 262–68.
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 13
IV argues that Ericsson’s cross-referencing of argu-
ments relating to different claims is similar to the manner
in which the petitioner cross-referenced arguments relat-
ing to different combinations of references in Magnum
Oil. In Magnum Oil, the petitioner sought review on the
basis that the claims would have been obvious over two
combinations, with the same secondary references but
different primary references. 829 F.3d at 1379. The
petitioner asserted that its arguments relating to a moti-
vation to combine the first combination also applied to the
second. Id. The Board then instituted review on the
second combination, but not the first. Id. We determined
that the petitioner could not rely on its arguments from
the first combination because the two primary references
were different, and the petitioner did not articulate why
the second combination could be combined in the same
manner as the first combination, considering the different
primary references. Id.
Ericsson’s reference to its claim 8 arguments is differ-
ent. Rather than referencing a different combination,
Ericsson used the same references, in the same way, to
argue that the combination disclosed or suggested nearly-
identical limitations. See J.A. 262–68. Although Erics-
son’s combination for claim 1 included an additional
reference (Beta), Ericsson provided additional detail
where relevant, explaining how the addition of Beta
affected its analysis. See, e.g., J.A. 265–66. Therefore,
there was no error in Ericsson, or the Board, relying on
those arguments.
IV next argues that even if it were proper for the
Board to rely on Ericsson’s arguments relating to claim 8,
Ericsson’s reason to combine Li and Yamaura was factu-
ally wrong. Specifically, IV argues that the reason that
Ericsson gave to the Board for combining the two refer-
ences in its petition—to add Yamaura’s control signals to
Li—was unnecessary because Li already disclosed the
required control signals. Therefore, IV contends that a
14 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
skilled artisan would have had no reason to attempt to
improve Li in the manner that Ericsson suggested.
Ericsson responds that IV has waived these argu-
ments by not presenting them to the Board below. On the
merits, Ericsson contends that the Board’s finding that Li
and Yamaura are directed to complementary aspects of a
wireless communications system is supported by substan-
tial evidence. Specifically, Ericsson argues that although
Li mentions control channels, Li is focused on data traffic
channels and does not provide detail as to how synchroni-
zation or control is performed. Therefore, Ericsson con-
tinues, a skilled artisan would have looked to Yamaura’s
preambles to provide synchronization and control.
Assuming that IV’s argument was not waived, we still
agree with Ericsson that the Board’s finding that a skilled
artisan would have been motivated to combine Li and
Yamaura is supported by substantial evidence. When
determining whether there was a motivation to combine
Li and Yamaura, the Board weighed the testimony of
Ericsson’s expert, Dr. Haas, and IV’s expert, Dr. Zeger,
and credited Dr. Haas’s testimony in determining that
there would have been a motivation to combine the refer-
ences. See Final Decision, 2016 WL 380219, at *8. Specif-
ically, Dr. Haas laid out the systems of Li and Yamaura,
as well as their relative advantages, and concluded that
Yamaura’s particular system would have added control
and synchronization advantages over existing systems.
J.A.1960–63. We find IV’s argument that a skilled arti-
san would not have needed to “search outside of Li to
make Li work,” IV’s Br. 42, unpersuasive because, in
addition to the Board’s explicit findings on a motivation to
combine, we have recognized “[t]he normal desire of
artisans to improve upon what is already generally
known.” In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed.
Cir. 2017). Accordingly, we discern no reversible error in
the Board’s finding.
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 15
IV also argues that the combination of Li, Yamaura,
Zhaung, and Beta does not disclose every limitation of
claims 1 and 2. Specifically, IV argues that the combina-
tion does not disclose (1) “a core-band . . . substantially
centered at an operating center frequency of the different
communication schemes”; or (2) that “the core-band is
substantially not wider than a smallest possible operating
channel bandwidth of the system.” We address each
argument in turn.
First, IV argues that the combination of Li, Yamaura,
Zhaung, and Beta does not disclose “a core band . . .
substantially centered at an operating center frequency of
the different communication schemes.” Specifically, IV
argues that (1) although Yamaura discloses operating at a
center frequency, it does not disclose different communi-
cation schemes; (2) although Li discloses different com-
munication schemes, it does not disclose operating at a
center frequency; and (3) Ericsson did not indicate that it
was relying on a combination of Li and Yamaura for this
limitation until its reply. Thus, IV contends, it was
improper for the Board to consider Ericsson’s late-
introduced combination. See IV’s Br. 48–50 (citing Intel-
ligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1369–70 (Fed. Cir. 2016)). IV further alleges
that even if the Board properly considered Ericsson’s
arguments, Ericsson did not explain how a skilled artisan
would have combined the two references to arrive at a
centered core band, as claimed.
Ericsson responds that the Board’s consideration of
the arguments was proper, and that the Board’s decision
was supported by substantial evidence. Specifically,
Ericsson contends that it explained, with supporting
testimony from Dr. Haas, why a skilled artisan would
have been motivated to combine the references.
We agree with Ericsson that it was not improper for
the Board to consider the evidence presented. In Intelli-
16 INTELLECTUAL VENTURES II LLC v. ERICSSON INC.
gent Bio-Systems, the petitioner introduced in its reply a
“new theory of invalidity by reference to new evidence,”
including a number of nonpatent references that were not
included in its petition. 821 F.3d at 1369. Here, in con-
trast, Ericsson did not introduce new references, and
instead continued to argue, just as it had in its petition,
that claim 1 would have been obvious over the combina-
tion of Li, Yamaura, Zhaung, and Beta.
We also agree with Ericsson that the Board’s finding
that the combination would have taught or suggested a
centered core band is supported by substantial evidence.
Ericsson presented testimony that a skilled artisan would
have placed the control signals in the center “[i]n order to
maintain the benefit of Yamaura’s narrowband control
signals.” J.A. 3217. The Board chose to credit that testi-
mony in finding that the combination disclosed the recited
limitation. Final Decision, 2016 WL 380219, at *9.
Although IV attacks the sufficiency of Ericsson’s evidence,
IV does not cite evidence, e.g., testimony from its own
expert, that this finding is incorrect. See, e.g., IV’s Br. 47–
53. As there was evidence to support the Board’s finding,
and no evidence to the contrary, that finding is supported
by substantial evidence.
Finally, IV argues that the combination of Li,
Yamaura, Zhaung, and Beta does not disclose that “the
core-band is substantially not wider than a smallest
possible operating channel bandwidth of the system.” IV
argues that “substantially not wider” should have been
understood as a term of magnitude, i.e. “significantly
narrower than.” IV contends that the plain language of
the claim, as well as the written description, supports this
understanding. IV argues that because the combination
only discloses a core band that is equal to the size of the
smallest operating channel, under the correct understand-
ing the combination does not disclose this limitation.
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 17
Ericsson responds that the Board’s understanding is
correct, because the written description specifically de-
fines the core band as “not greater than the smallest
operating channel bandwidth,” Ericsson’s Br. 57 (quoting
’431 patent, col. 5 ll. 1–3), and therefore indicates that the
term is one of approximation, and not magnitude. Erics-
son also argues that the remaining intrinsic evidence
supports that understanding.
We agree with Ericsson and the Board that a core
band “substantially not wider than a smallest possible
operating channel” does not exclude core bands equal in
width to the smallest possible operating channel. The
ordinary meaning of “not wider than” is “equal to or
narrower than.” That understanding, in addition to its
clear linguistic meaning, is confirmed by the written
description’s indication that the core band “is not greater
than the smallest operating channel.” ’431 patent, col. 5
ll. 2–3. Accordingly, the limitation is met by a core band
that is as wide as the smallest operating channel, and the
Board did not err in its understanding.
IV does not challenge the Board’s finding that the
combination discloses a core band that is “substantially
not wider than a smallest possible operating channel” as
that limitation was understood by the Board. Thus, we
affirm the Board’s conclusion that claim 1 of the ’431
patent is unpatentable as obvious. IV does not argue that
dependent claim 2 is separately patentable, and therefore
we affirm the Board’s conclusion as to that claim as well.
CONCLUSION
We have considered the remaining arguments, but
find them unpersuasive. For the foregoing reasons, the
decision of the Board is affirmed.
AFFIRMED