Federal Circuit: we've had this conversation; ipse dixit declarations don't cut it
Updated: Apr 21
TQ Delta, LLC, Appellant v. Cisco Systems, Inc., Dish Network LLC, Comcast Cable Communications, LLC, Cox Communications, Inc., Time Warner Cable Enterprises LLC, Verizon Services Corp., Arris Group, Inc., Appellees
Decided: November 22, 2019
Case Summary by Frederick Hadidi
As the Federal Circuit explained in its 2006 Dystar decision, whether a patent claim is invalid as obvious under 35 U.S.C. § 103 is a question of law based on several underlying factual determinations, including: (a) whether an artisan of ordinary skill would have been motivated to combine two or more prior art references to achieve the claimed invention; and (b) whether that ordinary artisan would have had a reasonable expectation of successfully creating the invention. The courts require a motivation to combine references because “inventions in most, if not all, instances rely on building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007).
In Inter Partes Review proceedings, the PTAB’s decisions on obviousness are often based on expert testimony; and to be upheld on appeal, a Board decision finding a patent claim invalid as obvious must be supported by substantial evidence. In this IPR appeal, a split panel of the Federal Circuit held that Board factfinding based on conclusory expert testimony is never sufficient to support an obviousness determination on substantial evidence review.
The Court’s opinion begins by describing an earlier district court judgment of invalidity; this judgment was based on expert testimony stating that two prior art references “could have been” combined to arrive at a claimed invention. The Federal Circuit reversed, because although the expert testified that the prior art references could have been combined to create the claimed invention, she provided no evidence that an artisan of ordinary skill would have been motivated to do so; instead, her testimony improperly relied on the patent’s teachings as a roadmap to combine disparate teachings in the prior art.
In a separate case, a district court held certain claims invalid as obvious after an expert testified that the problem addressed in the claims was known in the art, and further testified (without any factual basis) that components of the claims were “modular” and could be easily interchanged with similar components that were disclosed in six different prior art references. In its decision reversing the lower court’s ruling, the Federal Circuit noted that the expert’s testimony was “fraught with hindsight bias,” that he “fail[ed] to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does,” and that “[k]nowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.”
In TQ Delta v. Cisco (the subject of this case summary) case, TQ Delta’s related patents (9,014,243 and 8,718,158) disclose improvements to multicarrier radio transmitters—that is, radio transmitters that simultaneously transmit information over multiple radio channels. The patents explain that the amount of power transmitted over any single radio carrier varies over time and depends on the data being transmitted; and if the carriers transmit the same (or similar data) simultaneously, the total amount of power required by all of the channels will occasionally be more than the transmitter can handle without transmission errors. The patents solve this problem by scrambling the phases of the various radio carriers to spread out (in time) the power peaks of the various radio carriers; this reduces a transmission characteristic called the peak to average power ratio (PAR).
In its arguments before the PTAB, Cisco said that a combination of two prior art references (patents 6,144,696 to Shively and 6,625,219 Stopler) rendered TQ Delta’s patent claims invalid as obvious. Shively is directed generally to multicarrier radio systems, but it does not disclose techniques to reduce a transmitter’s peak to average power ratio. Stopler includes a two-sentence discussion of phase scrambling, but it contains no disclosure of PAR reduction or multicarrier transmission.
Cisco’s expert testified that an artisan of ordinary skill at the time of the invention would have been motivated to apply the phase randomization technique disclosed in the Stopler reference to reduce the peak to average power ratio of the multicarrier radio system disclosed in Shively, and that the combination would have been “a relatively simple and obvious solution.”
However, Cisco’s expert provided no factual support for any of this testimony, and the Federal Circuit wasn’t buying it. As they put it, “Untethered to any supporting evidence, much less any contemporaneous evidence, [Cisco’s expert’s] ipse dixit declaration ‘fail[s] to provide any meaningful explanation for why one of ordinary skill in the art would be motivated to combine these references at the time of this invention.’ It also ‘fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.’” (Citations omitted).
The Federal Circuit concluded by saying that without this evidentiary support, the statements of Cisco’s expert fail “to resist the temptation to read into the prior art the teachings of the invention in issue” (citing the Supreme Court’s 1966 Graham case), and that the only support for his assertions were found in TQ Delta’s patents; in other words, Cisco’s expert used TQ Delta’s patents as a roadmap to piece together the otherwise unrelated teachings of Shively and Stopler. Therefore, the expert’s “conclusory statements and unspecific expert testimony” were inadequate to support the Board’s factfinding regarding motivation to combine, and the Federal Circuit reversed the PTAB’s obviousness determination.
Judge Hughes dissented without opinion. Click here for the PDF.