September 17, 2018

Expert Testimony Critical to Determining Meaning of Prior Art to a PHOSITA

By Bryan K. Wheelock, Principal

In IXI IP, LLC v. Samsung Electronics Co., LTD., [2017-1665] (September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No. 7,039,033 were unpatentable. The ’033 patent is directed to a system that accesses information from a wide area network (WAN), such as the Internet, and local wireless devices in response to short-range radio signals.

The Federal Circuit noted that issues relating to a motivation to combine prior art references and a reasonable expectation of success are both questions of fact and must be reviewed for substantial evidence. Substantial evidence, they wrote, is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”

The single issue on appeal is whether a person having ordinary skill in the art (a “PHOSITA,” also known as a “POSITA” or “person of ordinary skill in the art”) would read the prior art as implicitly describing an implementation in which the JINI LUS, which identifies services provided on the network, is located on the gateway device, i.e., the cellphone. Samsung acknowledged that the reference does not expressly state that the JINI LUS is located on a mobile phone, but nonetheless contended, and the Board agreed, that a PHOSITA would read the reference to understand that JINI LUS may be located on the cellphone.

After examining the evidence, the Federal Circuit held that the Board’s determination that a PHOSITA reading the reference would understand that the cellphone is the master of the ad hoc network and contains the LUS is reasonable and was supported by substantial evidence. The determination of how a PHOSITA would understand the references was based on the weighing expert testimony from both parties, with Samsung’s expert being credited by the Board.