Holding: Any need or problem that is known in the field at the time of invention may provide the reason for combining or modifying elements in the prior art to show obviousness. The problem that motivated the patentee is not relevant. A modification or combination only needs to be desirable in light of the prior art, and not necessarily the most desirable or preferred, to give the proper motivation to modify or combine. Obviousness analysis should not afford weight to the mere fact that there is a difference between the cited prior art and the claimed invention.
Signals sent in telecommunications are commonly subject to degradation from random errors caused by interference and noise. The original message may be encoded as a codeword that is transmitted instead of the original message. Therefore, if an error occurs during transmission, the codeword contains enough information that a recipient may still be able to recover over the original meaning. US Patent No. 7,319,718 is directed to a coding method for transmitting channel quality information (“CQI”). This information indicates the quality of the cellular connection that the user equipment is receiving, and is typically represented a 5-bit sequence of binary data, with the right most bit representing the most significant bit (“MSB”). Higher data rates are assigned to user equipment having stronger signals and higher CQI scores.
The 5-bit CQI is encoded into a 20-bit codeword using a Transit Format Combination Indicator (“TFCI”). To calculate each bit of the 20-bit codeword, the five CQI bits are multiplied by a sequence basis table, and a sequence of additional mathematical steps are taken to determine whether resulting bit is a 0 or a 1. During a meeting to create a uniform standard for 3G mobile communication systems, a proposal made by Koninklijke Philips N.V. (“Philips”) suggested a sequence basis table such as the one below:
A few months later, LG Electronics filed a Korean patent application to which the ‘718 Patent claims priority that claimed the following sequence basis table:
The only difference between the Philips table and the LG table are the last two bits in the last row, where the Philips table is (…,1,0) and the LG table is (…,0,1). After the ‘718 Patent issued, it was assigned from LG to 3G Licensing.
3G Licensing sued Honeywell for patent infringement after Honeywell declined to enter a licensing agreement for the ‘718 Patent. 3G Licensing argue that the ‘718 Patent claims are essential to cellular stands for 3G and 4G technologies. Honeywell filed a petition for IPR, challenging certain claims of the ‘718 Patent as unpatentable over the Philips reference including the Philips sequence basis table shown above. The PTAB found that a person of ordinary skill in the art would not have been motivated to switch the last two bits in the table and therefore, the ‘718 Patent was not obvious in view of the Philips reference.
The Federal Circuit found the PTAB’s decision to be based on multiple legal errors and unsupported by evidence, and reversed the decision of the PTAB. First, the Federal Circuit found the PTAB’s decision to be improperly based on its finding that the ‘718 Patent’s primary motivation was to focus on system throughput rather than to minimize bit error rate, which was the main purpose of the Philips reference. Instead of focusing on the problem motivating the patentee, any need or problem that is known in the field at the time of invention may provide the reason for combining elements in cited prior art. The motivation to modify a prior art reference does not need to be the same motivation that drove the patentee to the claimed invention.
The Federal Circuit also found that the PTAB appeared to conflate the standards for obviousness and anticipation since, in its obviousness analysis, the PTAB found it significant that the Philips reference did not propose giving extra protection to the most significant bit by swapping the last two bits in the last row. However, if the Philips reference did propose swapping the last two bits, the Philips reference would anticipate the ‘718 Patent. Since anticipation is a separate invalidity theory, any obviousness analysis that affords weight to the mere fact that there is a difference in the cited prior art and the claimed invention is legal error.
Finally, the PTAB also erred in finding insufficient motivation to switch the last two bits of the Philips reference because Honeywell failed to show a consensus in the industry of the favored approach to protect the most significant bit. Obviousness does not require that a particular combination be preferred or the most desirable to provide motivation to a person skilled in the art to modify the prior art. Instead, the combination only needs to be desirable in light of the prior art and not necessarily the most desirable to give the proper motivation to modify or combine.
Federal Circuit Precedential 
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