In
Ericsson Inc. v. Intellectual Ventures I LLC, No.
2017-1521 (Fed. Cir. Aug. 27, 2018), Ericsson appealed a PTAB
decision finding that claims 1-3, 6-9, and 12-14 of U.S. Patent No.
5,602,831 ("the '831 patent") were not unpatentable
for obviousness. Concluding that the Board improperly failed to
consider portions of Ericsson's reply brief, the Federal
Circuit vacated and remanded the decision for the Board to consider
all the arguments in the reply brief.
In its IPR reply brief, Ericsson argued that given that
interleaving (an error correction technique) was known in the art,
the difference between the technique as claimed and as disclosed in
the prior art was insubstantial. However, having determined that
the prior art taught only one type of interleaving, the Board
declined to consider Ericsson's argument, holding that this was
a new theory beyond the scope of a proper reply.
