IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness decisions affirmed in network technology dispute, (Jul 24, 2024)

By Kevin M. Finson

The Board did not err in declining to find claims of two patents were unpatentable as obvious because it was entitled to credit the testimony of one expert over another.

A seller of communications network technology failed to show the obviousness of two communications network security patents belonging to a competitor, the U.S. Court of Appeals for the Federal Circuit has held. Substantial evidence in the form of expert testimony supported the PTAB’s decision finding that a reasonable expectation of success had not been established (Juniper Networks, Inc. v. Correct Transmission, LLC, Nos. 23-1046 and 23-1236 (Fed. Cir. July 24, 2024)).

Correct Transmission, LLC (Correct) was the owner of U.S. Patents Nos. 7,283,465 (the ’465 patent) and 7,983,150 (the ’150 patent), both of which were directed to mechanisms for protecting against failures in communication networks. Juniper Networks, Inc. (Juniper) petitioned for inter partes review of both patents on the ground of obviousness. The Patent Trial and Appeal Board (PTAB) instituted review and found that Juniper had not met its burden of proving unpatentability of any of the challenged claims.

Juniper appealed and the two proceedings were consolidated. As to both of the patents, the parties agreed that the cited prior art references disclosed all of the claim limitations and there was a motivation to combine; they disputed only whether a person of ordinary skill in the art would have a reasonable expectation of success.

Reasonable expectation of success. Juniper first argued that the Board had incorrectly required the use of “magic words” in deciding against Juniper because Juniper’s expert had made the substance of a reasonable expectation of success argument without specifically using the term “reasonable expectation of success.” The Federal Circuit held that while it was true that no “magic words” were required, upon review of the opinion it did not appear that the Board had actually imposed such a requirement.

Juniper also argued that the Board erred in its determination that the testimony of Juniper’s expert on the issue of reasonable expectation of success was conclusory and entitled to no weight and argued that the non-obviousness determination was not supported by substantial evidence. The Federal Circuit held that the Board was entitled to weigh the credibility of conflicting witness testimony and credit Correct’s expert over Juniper’s.

The court affirmed the decision of the Board in both proceedings.

The Case is Nos. 23-1046 and 23-1236.

Judge: Dyk, T.

Attorneys: Alan M. Fisch (Fisch Sigler, LLP) for Juniper Networks, Inc. Joshua Bennett (Carter Arnett Bennett & Perez PLLC) for Correct Transmission, LLC.

Companies: Juniper Networks, Inc.; Correct Transmission, LLC

Cases: Patent FedCirNews USPTO