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ARTICLE · 06 JULY 2018

Unsupported Expert Testimony Is Not Substantial Evidence

McDermott Will & Emery
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In reviewing a final written decision from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit ruled that an unsupported opinion is not sufficient to constitute ...

United StatesIntellectual Property
Kalpesh V. Upadhye
Kalpesh V. Upadhye
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In reviewing a final written decision from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit ruled that an unsupported opinion is not sufficient to constitute substantial evidence for the purposes of contradicting anticipatory disclosure of a prior art reference. Ericsson Inc. v. Intellectual Ventures I LLC, Case No. 16-1671 (Fed. Cir., May 29, 2018) (Newman, J) (Wallach, J, dissenting).

In connection with an inter partes review (IPR) proceeding, the PTAB ruled that independent claim 1 of the challenged patent, relating to "frequency hopping" in wireless communication systems, was not anticipated by a prior art reference presented by Ericsson. Intellectual Venture's (IV's) expert stated that the method described in the prior art reference did not teach each and every element of claim 1, and the PTAB relied on this statement to conclude that the claim was not anticipated or obvious. According to IV's expert, "the method

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