Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent, PTAB Litigation Blog
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Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the challenged claims unpatentable. Honeywell appealed. The Federal Circuit reversed, finding that the PTAB erred by (1) requiring identity between the motivations for the prior art and the ’718 patent, (2) failing to support its findings with substantial evidence, (3) conflating anticipation and obviousness, and (4) requiring the modification to be the most desirable modification.
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