Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Ericsson Inc. v. Intellectual Ventures I LLC

IPR Should Consider Reply Arguments Advancing Same Basic Theories

Ericsson Inc. v. Intellectual Ventures I LLC, __ F.3d __, 2018 WL 4055815 (Fed. Cir. Aug. 27, 2018) (REYNA, Taranto, Chen) (PTAB) (3 of 5 stars)

Fed Cir vacates IPR confirmation of IV’s claims over Ericsson’s obviousness attack. The Board abused its discretion by declining to consider arguments in Ericsson’s reply that the differences between the claims’ requirements and the teachings of the prior art were insubstantial. Contrary to the Board’s reasoning, this was not a new theory of obviousness but a response to the reasoning of the Institution Decision and the Patent Owner concerning claim interpretation. Ericsson was still pointing to the same disclosure as addressing the same claim requirement; all that was altered was its reasoning that discrepancies between the claims and the reference were insubstantial. The opinion notes that in this case, briefing up to and including the Institution Decision had assumed application of the broadest reasonable interpretation standard; it was only in IV’s Response that IV pointed out that Phillips interpretation was necessary, as the claims had expired. The opinion emphasizes that this outcome does not change or challenge the Board’s general authority to decline to address arguments raised first in reply.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS