IMO, Chanbond could win Cisco appeal if they prove that:
- PTAB expressly told Chandbond that Cisco would not be allowed to use Qualcomm,
- PTAB then used Qualcomm in their decision,
- PTAB failed to explain how Qualcomm would work & cite evidence - as required to be in their decision.
Below are points 2 & 3 from Sumary of Argument in their Appeal Brief. Highlighting is mine.
2. ChanBond was not provided notice and a fair opportunity to respond
to the Board’s findings with respect to Qualcomm. In its institution decision, the
Board notified ChanBond that Qualcomm and other systems disclosing cellular
telephones as wireless modems could not be relied upon because Cisco had failed
to include such references in its alleged invalidity grounds.
Consistent with the Board’s institution decision, ChanBond had no reason to, and did not, address
Cisco’s evidence and arguments with respect to Qualcomm. Yet, after Cisco
confirmed at the hearing that it was not relying on Qualcomm as prior art, the
Board issued a final written decision in which it extensively relied on Qualcomm
as prior art to support its obviousness analysis. As ChanBond was expressly
notified in the institution decision that Qualcomm could not be relied on by Cisco
as prior art, ChanBond was denied a fair opportunity to address Cisco’s arguments
and expert testimony based on Qualcomm that the Board ultimately adopted in its
final written decision.
3. The Board found the claims obvious over “the combination of Gorsuch’s
addressable devices, modem, and protocol converter with Tiedemann’s mobile
station.” FWD at 37 (Appx0037). It is undisputed, however, that the combination
as set forth in the Petition does not perform the claimed functionality. Ultimately,
the Board brushed off the deficiencies in the proposed combination with the
sweeping statement that “an ordinarily skilled artisan would have sought to
combine” the prior art references “to arrive at the broad functionality of” the
claimed system. FWD at 42 (Appx0042). But that is not the correct methodology.
Rather, the Board was required to explain and cite evidence showing how the
proposed combination was supposed to work. The Board failed to do so.
