PTAB wrongly invalidated patent, says Federal Circuit
The Patent Trial and Appeal Board (PTAB) wrongly invalidated a patent owned by licensing company Intellectual Ventures, according to a decision by the US Court of Appeals for the Federal Circuit.
In a decision handed down yesterday, May 31, the court held that the board had erred in its legal analysis when invalidating US patent number 7,382,771.
Motorola Mobility had been accused by Intellectual Ventures of infringing the patent, called “Mobile wireless hotspot system”.
But the board, in a final written decision in inter partes review, found that Intellectual Ventures’ challenged claims were unpatentable based on allegedly prior art.
The licensing company argued that it had conceived the invention in the patent and reduced it to practice “prior to the critical date of the allegedly anticipating prior art”.
According to the Federal Circuit, the PTAB had erred in its analysis of whether the patent’s routing system limitation had been previously conceived.
“The board erred by requiring as part of the LAN limitation that Intellectual Ventures corroborate conception of authentication and control features—despite having rejected a construction that would have included such features,” said the court.
A credibility issue also arose, focusing on whether the Windows 98 version used by the inventors actually had the capability to provide the routing limitation.
Intellectual Ventures had provided testimony from one inventor and its expert that Windows 98 had such capability.
Although the corroborating evidence played a “minor role”, the PTAB was “too dismissive and erred in refusing to consider this evidence”, said the court.
The Federal Circuit vacated the decision and remanded it to the board.
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