Fed Circuit sides with TCL in Ericsson patent dispute

The US Court of Appeals for the Federal Circuit has upheld an earlier decision that four claims of one of Ericsson’s patents are invalid.

In a precedential ruling yesterday, November 7, the Federal Circuit agreed with the US Patent and Trademark Office that claims 13,15, 16 and 18 of the disputed patent (US number 6,029,052) are obvious in light of prior art.

The decision comes after Chinese electronics company, TCL, instituted an inter partes review of the ‘052 patent at the Patent Trial and Appeal Board, which ruled that all the challenged claims are unpatentable.

The ‘052 patent describes a “direct conversion receiver for wireless communication systems that may receive signals from systems that operate at different frequency bands”.

In its appeal to the Federal Circuit, Ericsson argued that an article, titled “Multimodale Funktelefone”, by Hans-Joachim Jentschel, was not admissible as prior art because it was not publicly available more than one year before Ericsson’s earliest asserted filing date.

The Jentschel article discusses the problem presented by wireless systems operating at different frequencies.

Ericsson said that even if Jentschel is deemed to be valid prior art, the ‘052 patent is not obvious in light of the article.

Although the Jentschel article was published in Germany in May/June,1996—more than one year earlier than Ericsson’s filing date (July 1,1997)—Ericsson argued that Jentschel was not publicly available in libraries until October 1996.

It said “dates alone on a document are insufficient as a matter of law to establish public accessibility”.

But the Federal Circuit sided with TCL, which provided sworn testimony from a librarian in Germany that the article was publicly accessible since May/June 1996.

“Ericsson provided no evidence to counter the declaration, the date on the face of the journal, and the library’s records showing receipt of the journal and its shelving,” the Federal Circuit said.

The appeals court also rejected Ericsson’s argument that its patent was not obvious in light of Jentschel. It said that the Jentschel article, taken together with two Japanese patent applications (JP 947 and JP 755) render the disputed claims invalid for obviousness.

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