CAFC reverses PTAB for lack of substantial evidence in TQ Delta

Of issue here was conclusory expert testimony:


Conclusory expert testimony does not qualify
as substantial evidence. See, e.g., MobileMedia Ideas LLC
v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015) (“Conclusory statements by an expert . . . are insufficient to sustain a jury’s verdict.”); Regents of Univ. of Minn. v. AGA
Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013) (quoting Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir.
2008)) (“Conclusory expert assertions cannot raise triable
issues of material fact . . . .”); Koito Mfg. Co. v. Turn-KeyTech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (“General
and conclusory testimony . . . does not suffice as substantial evidence of invalidity.”); Sea Robin Pipeline Co. v.
FERC, 795 F.2d 182, 188 (D.C. Cir. 1986) (“[I]nordinate
faith in the conclusory assertions of an expert . . . cannot
satisfy the requirement . . . [of] substantial evidence.”).
“Rejections on obviousness grounds,” in particular,
“cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).5 “This requirement is
as much rooted in the Administrative Procedure Act, which
ensures due process and non-arbitrary decisionmaking, as
it is in § 103.” Kahn, 441 F.3d at 988 (citing Lee, 277 F.3d
at 1344–45). Accordingly, “a conclusory assertion with no
explanation is inadequate to support a finding that there
would have been a motivation to combine” because “[t]his
type of finding, without more, tracks the ex post reasoning
KSR warned of and fails to identify any actual reason why
a skilled artisan would have combined the elements in the
manner claimed.” In re Van Os, 844 F.3d 1359, 1361–62
(Fed. Cir. 2017) (citing KSR, 550 U.S. at 418, 421).




Also from ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012))



In particular, “[t]he expert
failed to explain how specific references could be combined,
which combination(s) of elements in specific references
would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” Id.
The challenger’s expert further testified that:
The motivation to combine would be because you
wanted to build something better. You wanted a
system that was more efficient, cheaper, or you
wanted a system that had more features, makes it
more attractive to your customers, because by combining these two things you could do something
new that hadn’t been able to do before.
Id. at 1328. We rejected this testimony because it “fail[ed]
to explain why a person of ordinary skill in the art would
have combined elements from specific references in the way
the claimed invention does.” Id. (first citing KSR, 550 U.S.
at 418; then citing Innogenetics, 512 F.3d at 1373). We explained that “[k]nowledge of a problem and motivation to
solve it are entirely different from motivation to combine



Of TQ Delta:


Untethered to any supporting evidence, much less any
contemporaneous evidence, Dr. Tellado’s ipse dixit declaration “fail[s] to provide any meaningful explanation for why
one of ordinary skill in the art would be motivated to combine these references at the time of this invention.”
InTouch, 751 F.3d at 1353–54 (emphasis added). It also
“fails to explain why a person of ordinary skill in the art
would have combined elements from specific references in
the way the claimed invention does.” ActiveVideo, 694 F.3d
at 1328 (first citing KSR, 550 U.S. at 418; then citing Innogenetics, 512 F.3d at 1373). Without this support, Dr.
Tellado’s declaration ultimately fails “to resist the temptation to read into the prior art the teachings of the invention
in issue.” Graham v. John Deere Co. of Kan. City,
383 U.S. 1, 36 (1966). Indeed, the only support for Dr. Tellado’s assertions is found in the description of the invention
of the patents-in-suit:
The modulator 46 also includes a phase scrambler 66 that combines a phase shift computed for
each QAM-modulated carrier signal with the phase
characteristic of that carrier signal. Combining
phase shifts with phase characteristics, in accordance with the principles of the invention, substantially scrambles the phase characteristics of the
carrier signals in the transmission signal 38. By
scrambling the phase characteristics of the carrier
signals, the resulting transmission signal 38 has a
substantially minimized peak-to-average (PAR)
power ratio.
’243 patent col. 4 ll. 29–38.
Dr. Tellado’s “conclusory statements and unspecific expert testimony” are thus inadequate to support the Board’s
factfinding regarding motivation to combine.