Before O’Malley, Mayer, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Claims may be rejected under 35 § U.S.C. 103 based on implicit disclosures of a prior art reference.

Samsung and Apple filed an IPR petition challenging claims of IXI’s patent relating to hot-spot technology.  The PTAB held that the challenged claims were obvious, concluding that a person skilled in the art would read the primary prior art reference as implicitly describing the claimed configuration.  IXI appealed.

The Federal Circuit affirmed.  The issues of motivation to combine and reasonable expectation of success are both questions of fact, which are reviewed by the Federal Circuit for substantial evidence.  The Federal Circuit acknowledged that the primary prior art reference did not expressly disclose the claimed configuration, but concluded that the Board’s determination that a person skilled in the art would read the main prior art reference as implicitly describing this configuration was reasonable and supported by substantial evidence.