This morning the Federal Circuit released a precedential opinion in a patent case appealed from the Patent Trial and Appeal Board. Notably, Judge Stoll dissented from the majority’s decision to reverse a final written description that had declined to hold certain patent claims invalid as obvious. Here are the introductions to the majority and dissenting opinions.
Honeywell International Inc. v. 3G Licensing, S.A. (Precedential)
Appellants Honeywell International Inc., Telit Cinterion Deutschland GmbH, and Sierra Wireless, ULC (collectively, “Honeywell”) appeal the Patent Trial and Appeal Board’s (“Board”) final written decision in IPR2021- 00908 declining to hold claims 1, 2, 4–7, 9–13, and 15–23 of U.S. Patent No. 7,319,718 (the “’718 patent”) unpatentable as obvious. See Honeywell Int’l, Inc. v. 3G Licensing S.A., No. IPR2021-00908, 2022 WL 16934074 (P.T.A.B. Nov. 14, 2022). We reverse.
STOLL, Circuit Judge, dissenting.
I agree with the majority’s determination in Part III that the Board erred by giving weight to the fact that the Philips reference did not propose swapping the last two bits of the last row of its basis sequence table. In so doing, the Board erroneously conflated obviousness with anticipation. This conclusion should result in our vacating the Board’s decision for the Board to reevaluate obviousness of claims 1–2, 4–5, and 15–23 under the proper legal framework. Instead, the majority takes the extraordinary step of fact finding, a role not appropriate at the appellate stage, making arguments for the parties that they did not make and then deciding those arguments. Respectfully, this is not our role. This case should be vacated for the Board to review the evidence and make fact findings, we should not be reversing. I respectfully dissent from the majority’s departure from our role as an appellate court.