NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

INTELLECTUAL VENTURES II LLC,

Appellant

v.

ERICSSON INC., TELEFONAKTIEBOLAGET LM 

ERICSSON,

Appellees

______________________ 

2016-1803

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board, in No. IPR2014-

01195.

______________________ 

Decided: April 18, 2017

______________________ 

SHARON HWANG, McAndrews, Held & Malloy, Ltd., 

Chicago, IL, argued for appellant. Also represented by 

PETER J. MCANDREWS, RAJENDRA A. CHIPLUNKAR, 

STEPHANIE SAMZ. 

J. ANDREW LOWES, Haynes & Boone, LLP, Richardson, 

TX, argued for appellees. Also represented by CLINT S.

WILKINS; DEBRA JANECE MCCOMAS, Dallas, TX.

______________________ 
2 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

Before LOURIE, REYNA, and STOLL, Circuit Judges.

LOURIE, Circuit Judge. 

Intellectual Ventures II LLC (“IV”) appeals from the 

written decision of the United States Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board (“the 

Board”) in an inter partes review (“IPR”) proceeding 

concluding that claims 1 and 2 of U.S. Patent 7,787,431 

(“the ’431 patent”) are unpatentable as obvious. Ericsson 

Inc. v. Intellectual Ventures II LLC, IPR 2014-01195, 2016 

WL 380219 (P.T.A.B. Jan. 29, 2016) (“Final Decision”).

Because the Board did not err in concluding that claims 1 

and 2 are unpatentable, we affirm. 

 BACKGROUND

IV owns the ’431 patent, which describes a variablebandwidth wireless communication system. See ’431 

patent, col. 3 l. 7–col. 5 l. 7. According to the patent, 

different countries use different segments (or “bands”) of 

the electromagnetic spectrum for wireless communications. Id. col. 1 ll. 34–36. Moreover, different wireless 

operators can “own and operate on a broadband spectrum 

that is different in frequency and bandwidth from other 

operators.” Id. col. 1 ll. 36–39. Thus, a single wireless 

device must be capable of transmitting and receiving 

multiple bandwidths if it is to be used in areas or systems 

that require different bandwidths. Id. col. 1 ll. 30–42.

The ’431 patent purports to allow for a wireless device 

to communicate in systems or regions with different 

communication schemes that require different bandwidths. In particular, the patent describes a “core band” 

in which basic communication signals are transmitted. 

Id. col. 4 l. 67–col. 5 l. 25. The core band is “substantially 

centered at the operating center frequency” of the different communication schemes, id. col. 5 l. 1, and may be 

used by a particular communication system to transmit a 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 3

preamble that identifies the bandwidth used by that 

system, id. col. 6 ll. 4–32. The device can then adjust its 

signal accordingly. Id. col. 4 ll. 25–35. Moreover, the core 

band is described as “not greater than the smallest operating channel bandwidth among all the possible spectral 

bands that the receiver is designed to operate with.” Id.

col. 5 ll. 2–4. Claim 1 reads: 

1. In a variable bandwidth wireless communication system communicating under multiple different communication schemes that each have a 

different bandwidth, a process performed by a 

base station of generating an information bearing 

signal for wireless transmission, the process comprising:

utilizing by the base station a number of 

subcarriers to construct a variable bandwidth wireless channel;

utilizing by the base station groups of subcarriers, wherein each group includes a 

plurality of subcarriers;

maintaining a fixed spacing between adjacent subcarriers;

adding or subtracting, by the base station, 

groups of subcarriers to scale the variable 

bandwidth wireless channel and achieve 

an operating channel bandwidth; and

wherein a core-band, including a plurality of 

subcarrier groups, substantially centered 

at an operating center frequency of the different communication schemes, is utilized 

by the base station as a broadcast channel 

carrying radio control and operation signalling, where the core-band is substantially not wider than a smallest possible 
4 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

operating channel bandwidth of the system; and

wherein the information bearing signal has a 

primary preamble sufficient for basic radio 

operation and wherein:

the primary preamble is a direct sequence in 

the time domain with a frequency content 

confined within the core-band, or is an orthogonal frequency-divisional multiplexing (OFDM) symbol corresponding to a 

particular frequency pattern within the 

core-band; and

wherein properties of the primary preamble 

comprise:

an autocorrelation having a large correlation 

peak with respect to sidelobes;

a cross-correlation with other primary preambles having a small cross-correlation 

coefficient with respect to power of other 

primary preambles; and

a small peak-to-average ratio; and

wherein a large number of primary preamble 

sequences exhibit the properties.

Id. col. 9 l. 33–col. 10 l. 2 (emphases added). Claim 2 adds 

that the information-bearing signal is an “orthogonal 

frequency division multiple access (OFDMA) signal,” and 

is used in a downlink with particular features. See id. col. 

10 ll. 3–9. 

Ericsson Inc. and Telefonaktiebolaget LM Ericsson 

(together, “Ericsson”) filed a petition for IPR of the ’431 

patent, alleging that claims 1, 2, 8–12, and 18–22 were 

unpatentable as obvious over various combinations of 

references. The Board ultimately instituted review of 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 5

only claims 1 and 2. Ericsson Inc. v. Intellectual Ventures 

II LLC, IPR 2014-01195, 2015 WL 5565070, at *8–9 

(P.T.A.B. Feb. 4, 2015) (“Institution Decision”). Specifically, the Board instituted review of whether the claims 

would have been obvious over (1) U.S. Patent 6,904,283 

(“Li”), which describes a variable-bandwidth communications system, see J.A. 721–44; (2) U.S. Patent 7,782,750 

(“Yamaura”), which describes a communications system in 

which controls signals are communicated in a particular 

band of an OFDM system using preambles, see J.A. 745–

87; (3) U.S. Patent 7,426,175 (“Zhaung”), which describes 

pilot signals with particular properties at the beginning of 

communications, resulting in improved correlation, see

J.A. 788–96; and (4) a technical report describing a universal mobile telecommunications system with a core 

band equal to the width of the smallest operating channel

(“Beta”),1 see J.A. 830, 1003–29.2 

In its written decision, the Board concluded that 

claims 1 and 2 are unpatentable as obvious over the 

combination of Li, Yamaura, Zhaung, and Beta. First, the 

Board determined that claim 1’s requirement that the 

core band be “substantially not wider” than a smallest 

operating channel was a term of approximation, and not 

of magnitude, and so would be met by a core band that 

was the same size as the operating channel. Final Deci1 The Board’s opinion refers to Beta as “UTRA.” 

See Final Decision, 2016 WL 380219, at *3. 

2 The Board also instituted review of claims 1 and 2 

based on a combination of six references, and later determined that the six-reference combination also rendered 

claims 1 and 2 unpatentable as obvious. Final Decision, 

2016 WL 380219, at *11–12. Because we affirm the 

Board’s conclusion based on the combination of Li, 

Yamaura, Zhaung, and Beta, we need not, and do not, 

reach the second combination.

 
6 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

sion, 2016 WL 380219, at *5–6. The Board thus rejected 

IV’s argument that “substantially not wider” meant 

“significantly narrower than,” although the Board determined that no explicit construction was necessary. Id. at 

*6. 

The Board then turned to Ericsson’s proposed combination of references. First, the Board determined that 

Ericsson had adequately alleged reasons why a skilled 

artisan would have combined Li and Yamaura, rejecting 

IV’s argument that Ericsson could not rely for claims 1 

and 2 on arguments it had made in its petition relating to 

similar, but not identical, claims. Id. at *7. Specifically, 

the Board determined that although claims 1 and 2 had 

different limitations, Ericsson proposed combining the 

same teachings from Li and Yamaura to teach similar 

features of the claims. Id. Thus, the Board concluded 

that IV had sufficient notice of, and an opportunity to 

respond to, Ericsson’s proposed combination. Id. 

 The Board next found that a skilled artisan would 

have been motivated to combine Li and Yamaura, as the 

references were directed to “complementary aspects of 

wireless communication systems.” Id. at 8. In particular, 

the Board found that a skilled artisan would have looked 

to improve Li’s controlling and signaling by implementing 

Yamaura’s use of control and synchronization channels to 

exchange information before establishing communications. Id. In so doing, the Board stated that it considered 

the testimony of both IV and Ericsson’s experts, and 

credited Ericsson’s expert. Id. The Board also found that 

IV did not contest that there would have been a motivation to combine Li and Beta. Id. 

The Board then addressed the manner in which Ericsson presented its argument that a skilled artisan would 

have been motivated to combine the references. The 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 7

Board noted that Ericsson did not make a specific argument relating to why a skilled artisan would have combined Yamaura and Beta, but found that because a skilled 

artisan would have been motivated to combine Li with 

Yamaura and Li with Beta, there would have been a 

motivation to combine the teachings of Yamaura and Beta 

through Li. Id. The Board rejected IV’s argument that 

establishing a motivation to combine in that manner was 

improper, reasoning that “[t]here is no per se rule that 

requires each subset of prior art references to be independently combined.” Id. 

Finally, the Board found that there would have been a 

motivation to combine Yamaura’s preambles with 

Zhaung’s method of improving correlation of preambles

because the combination would have involved applying a 

known technique to achieve a predictable result. Id. at 

*8–9. The Board rejected IV’s argument that the combination would have rendered the pilot symbols used by Li 

inoperable, because Ericsson’s proposed combination only 

involved the use of Li’s variable bandwidth system, and 

not Li’s pilot symbols. Id. at *9. 

On the merits, the Board found that the combination 

of Li and Yamaura disclosed or suggested the required 

core band substantially centered at an operating frequency. Specifically, the Board found that Yamaura disclosed 

a centered control channel, and Li disclosed a variable 

bandwidth system. Id. at *9. The Board then credited 

Ericsson’s expert to find that it would have been desirable 

and within the capabilities of a skilled artisan to combine 

the two in a way that ensured that Yamaura’s control 

signals remained substantially centered. Id. The Board 

also rejected IV’s argument that Yamaura’s core band was 

not “substantially not wider” than the operating channel 

bandwidth, as it relied on the definition that the Board 

had rejected. Id. 
8 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

Based on those findings, the Board concluded that 

Ericsson had proven that claims 1 and 2 are unpatentable 

as obvious. Id. at *11–12. IV timely appealed. We have 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s factual determinations for substantial evidence and its legal determinations de novo. 

Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. 

Cir. 2015). Obviousness is a question of law based on 

subsidiary findings of fact relating to “the scope and 

content of the prior art, differences between the prior art 

and the claims at issue, the level of ordinary skill in the 

pertinent art, and any objective indicia of nonobviousness.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 

(Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550 

U.S. 398, 406 (2007)). Whether there would have been a 

motivation to combine multiple references is also a question of fact. S. Ala. Med. Sci. Found. v. Gnosis S.P.A., 808 

F.3d 823, 826 (Fed. Cir. 2015). Accordingly, we review 

these findings for substantial evidence. Allied Erecting & 

Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 

1373, 1380 (Fed. Cir. 2016). A finding is supported by 

substantial evidence if a reasonable mind might accept 

the evidence as sufficient to support the finding. Consol. 

Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

IV’s first argument challenges Ericsson’s general 

approach to the obviousness analysis, which was adopted 

by the Board. Rather than providing individual motivations to combine Li with Yamaura, Li with Beta, and 

Yamaura with Zhaung, IV argues, Ericsson had to offer a 

rationale for combining each reference with each other 

reference, or all of the references together. Further, IV 

argues that Ericsson had to establish a motivation to 

combine Yamaura with Beta, rather than arguing that 

because there would have been a motivation to combine Li 

with both Yamaura and Beta separately, there would 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 9

have been a motivation to combine all three together. By 

accepting Ericsson’s “pairwise” combination of references, 

IV contends, the Board’s analysis became infected by 

impermissible hindsight. 

Ericsson responds that there was nothing improper 

about the manner in which it presented evidence relating 

to the motivation to combine. Ericsson contends that 

because the approach to obviousness is “expansive and 

flexible,” Ericsson’s Br. 26 (quoting KSR, 550 U.S. at 415), 

the Board’s analysis was acceptable in light of the evidence and arguments presented. 

We agree with Ericsson that there was nothing inherently improper with the evidence presented or the Board’s 

analysis. KSR rejected “rigid and mandatory formulas” in

analyzing obviousness, 550 U.S at 419, and our decisions 

following KSR have reflected that “[t]he determination of 

obviousness is dependent on the facts of each case,” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1089 (Fed. 

Cir. 2008). For example, we have held that “[a] claimed 

invention may [have been] obvious even when the prior 

art d[id] not teach each claim limitation, so long as the 

record contains some reason why one of skill in the art 

would [have] modif[ied] the prior art to obtain the claimed 

invention.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 

(Fed. Cir. 2016). Similarly, we have explained that the 

obviousness analysis need not always be supported by 

expert opinions, as in some cases “the technology will be 

easily understandable without the need for expert explanatory testimony.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed Cir. 2009) (quoting

Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1369 

(Fed. Cir. 2004)). 

Thus, our precedent establishes that, consistent with 

KSR, there is no single formula or approach that must 

mechanically be followed to determine whether a claimed 

invention would have been obvious. Here, the Board
10 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

articulated reasons why a skilled artisan would have 

combined the references to arrive at the contested features, see Final Decision, 2016 WL 380219, at *7–10, and 

its ultimate conclusion of obviousness is directed to the 

claims as a whole, id. at *1, *7, *12. Thus, on the facts of 

this case, we find no error in the Board’s approach. 

IV also contends that the Board’s erroneous approach 

led to errors on the merits of the motivation-to-combine 

analysis. Specifically, IV argues that not requiring a 

rationale to combine all four references together allowed 

Ericsson to rely on references that are directed to different aspects of wireless communications and do not address the problem that motivated the inventor of the ’431 

patent. Ericsson responds that the problem motivating 

the inventor is irrelevant to the obviousness analysis. 

We agree with Ericsson that the references used to establish that a claim would have been obvious need not be 

directed to the same problem that the inventor was trying 

to solve. Indeed, in KSR the Supreme Court explicitly

stated that “neither the particular motivation nor the 

avowed purposed of the patentee controls” the determination whether a claimed invention would have been obvious. 550 U.S. at 419. Thus, whether the cited references 

are directed to the same problem that the inventor was 

trying to solve is not conclusive concerning the obviousness analysis. IV’s other argument essentially challenges 

the motivation to combine the cited references; we address those arguments in detail infra. 

IV next argues that the Board’s method of analyzing 

the motivation to combine allowed it to ignore IV’s argument that the combination would have rendered Li inoperable for its intended purpose. According to IV, it 

presented evidence that Li’s pilot signals communicate 

bandwidth allocation information to mobile stations, 

while Zhaung’s pilot sequences do not convey such information. Accordingly, IV contends, replacing Li’s pilot 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 11

signals with Zhaung’s pilot sequences would result in a 

system that was unable to convey the status of available 

bandwidth and, therefore, unable to provide variable 

bandwidth. As Ericsson did not rebut this evidence, IV 

argues that the Board’s decision should be reversed. 

Ericsson responds that the Board’s decision was not 

erroneous because it never argued that Li’s pilot signals 

would be replaced by Zhaung’s pilot sequences. Instead, 

Ericsson contends that it argued that Yamaura, together 

with Zhaung, disclosed preambles with particular properties, and that a skilled artisan would have been motivated 

to add those preambles to Li’s variable-bandwidth system. 

Therefore, Ericsson argues, IV’s assertions are based on 

an incorrect premise. 

We agree with Ericsson that there was no error in the 

Board’s analysis. The Board’s opinion shows that it did 

not ignore IV’s inoperability argument; instead, the Board 

considered and rejected that argument. Final Decision, 

2016 WL 380219, at *9. Moreover, “it is well-established 

that a determination of obviousness based on teachings 

from multiple references does not require an actual, 

physical substitution of elements.” In re Mouttet, 686 

F.3d 1322, 1332 (Fed. Cir. 2012). Instead, the relevant 

question is “what the combined teachings of the references would have suggested to those having ordinary skill 

in the art.” Id. at 1333. The Board’s rejection of IV’s 

inoperability argument, see Final Decision, 2016 WL 

380219, at *9, comports with those directions. Ericsson 

proposed that a skilled artisan would have been motivated to add the properties of Zhaung’s pilot signals to 

Yamaura’s preambles, and would have been similarly 

motivated to add those preambles to Li’s variablebandwidth system. See J.A. 243–53. As Ericsson did not 

propose combining the particular features that IV argues 

would have led to an inoperable result, there was no 

reversible error in the Board’s decision.
12 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

IV next argues that the Board’s rationale for combining Li and Yamaura is legally and factually incorrect. IV 

first argues that the Board improperly relied on Ericsson’s

arguments relating to claim 8 in arguing that a skilled 

artisan would have been motivated to create the invention 

of claim 1, even though the two claims are different. IV 

argues that we can review this issue because it is challenging the Board’s ultimate conclusion of obviousness, 

rather than its institution decision. See In re Magnum 

Oil Tools Int’l, Ltd., 829 F.3d 1364, 1374 (Fed. Cir. 2016). 

Ericsson responds that IV’s complaints are essentially 

a challenge to the Board’s decision to institute review, 

which is unreviewable. See Cuozzo Speed Techs., LLC v. 

Lee, 136 S.Ct. 2131, 2141 (2016). Even if it can be reviewed, Ericsson contends that its petition provided 

reasons to combine Li and Yamaura that applied across 

all of the claims, and that IV was provided fair notice and 

an opportunity to respond. 

 We agree with IV that we can review the Board’s 

ultimate decision whether Ericsson presented sufficient 

evidence to establish that a skilled artisan would have 

been motivated to combine Li and Yamaura. Magnum Oil

makes clear that we can review all “arguments regarding 

the basis for the Board’s ultimate judgment of unpatentability,” 829 F.3d at 1374, and here IV is challenging 

whether Ericsson provided sufficient evidence of a motivation to combine the references. 

We agree with Ericsson, however, that there was 

nothing improper about the Board relying on arguments 

that Ericsson incorporated from its treatment of claim 8 

into its treatment of claim 1. In presenting its contention 

that claim 1 would have been obvious, Ericsson both made 

independent arguments and, where the claim limitations 

were essentially the same, referenced its earlier arguments relating to claim 8. J.A. 262–68. 
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 13

IV argues that Ericsson’s cross-referencing of arguments relating to different claims is similar to the manner 

in which the petitioner cross-referenced arguments relating to different combinations of references in Magnum 

Oil. In Magnum Oil, the petitioner sought review on the 

basis that the claims would have been obvious over two 

combinations, with the same secondary references but 

different primary references. 829 F.3d at 1379. The 

petitioner asserted that its arguments relating to a motivation to combine the first combination also applied to the 

second. Id. The Board then instituted review on the 

second combination, but not the first. Id. We determined 

that the petitioner could not rely on its arguments from 

the first combination because the two primary references 

were different, and the petitioner did not articulate why 

the second combination could be combined in the same 

manner as the first combination, considering the different 

primary references. Id. 

Ericsson’s reference to its claim 8 arguments is different. Rather than referencing a different combination, 

Ericsson used the same references, in the same way, to 

argue that the combination disclosed or suggested nearlyidentical limitations. See J.A. 262–68. Although Ericsson’s combination for claim 1 included an additional 

reference (Beta), Ericsson provided additional detail 

where relevant, explaining how the addition of Beta 

affected its analysis. See, e.g., J.A. 265–66. Therefore, 

there was no error in Ericsson, or the Board, relying on 

those arguments. 

IV next argues that even if it were proper for the 

Board to rely on Ericsson’s arguments relating to claim 8, 

Ericsson’s reason to combine Li and Yamaura was factually wrong. Specifically, IV argues that the reason that 

Ericsson gave to the Board for combining the two references in its petition—to add Yamaura’s control signals to 

Li—was unnecessary because Li already disclosed the 

required control signals. Therefore, IV contends that a
14 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

skilled artisan would have had no reason to attempt to 

improve Li in the manner that Ericsson suggested. 

Ericsson responds that IV has waived these arguments by not presenting them to the Board below. On the 

merits, Ericsson contends that the Board’s finding that Li 

and Yamaura are directed to complementary aspects of a 

wireless communications system is supported by substantial evidence. Specifically, Ericsson argues that although 

Li mentions control channels, Li is focused on data traffic 

channels and does not provide detail as to how synchronization or control is performed. Therefore, Ericsson continues, a skilled artisan would have looked to Yamaura’s 

preambles to provide synchronization and control. 

Assuming that IV’s argument was not waived, we still 

agree with Ericsson that the Board’s finding that a skilled 

artisan would have been motivated to combine Li and 

Yamaura is supported by substantial evidence. When 

determining whether there was a motivation to combine 

Li and Yamaura, the Board weighed the testimony of 

Ericsson’s expert, Dr. Haas, and IV’s expert, Dr. Zeger, 

and credited Dr. Haas’s testimony in determining that 

there would have been a motivation to combine the references. See Final Decision, 2016 WL 380219, at *8. Specifically, Dr. Haas laid out the systems of Li and Yamaura, 

as well as their relative advantages, and concluded that 

Yamaura’s particular system would have added control 

and synchronization advantages over existing systems. 

J.A.1960–63. We find IV’s argument that a skilled artisan would not have needed to “search outside of Li to 

make Li work,” IV’s Br. 42, unpersuasive because, in 

addition to the Board’s explicit findings on a motivation to 

combine, we have recognized “[t]he normal desire of 

artisans to improve upon what is already generally 

known.” In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. 

Cir. 2017). Accordingly, we discern no reversible error in 

the Board’s finding.
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 15

IV also argues that the combination of Li, Yamaura, 

Zhaung, and Beta does not disclose every limitation of 

claims 1 and 2. Specifically, IV argues that the combination does not disclose (1) “a core-band . . . substantially 

centered at an operating center frequency of the different 

communication schemes”; or (2) that “the core-band is 

substantially not wider than a smallest possible operating 

channel bandwidth of the system.” We address each 

argument in turn. 

First, IV argues that the combination of Li, Yamaura, 

Zhaung, and Beta does not disclose “a core band . . . 

substantially centered at an operating center frequency of 

the different communication schemes.” Specifically, IV 

argues that (1) although Yamaura discloses operating at a 

center frequency, it does not disclose different communication schemes; (2) although Li discloses different communication schemes, it does not disclose operating at a 

center frequency; and (3) Ericsson did not indicate that it 

was relying on a combination of Li and Yamaura for this 

limitation until its reply. Thus, IV contends, it was 

improper for the Board to consider Ericsson’s lateintroduced combination. See IV’s Br. 48–50 (citing Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 

F.3d 1359, 1369–70 (Fed. Cir. 2016)). IV further alleges 

that even if the Board properly considered Ericsson’s 

arguments, Ericsson did not explain how a skilled artisan 

would have combined the two references to arrive at a 

centered core band, as claimed. 

Ericsson responds that the Board’s consideration of 

the arguments was proper, and that the Board’s decision 

was supported by substantial evidence. Specifically, 

Ericsson contends that it explained, with supporting 

testimony from Dr. Haas, why a skilled artisan would 

have been motivated to combine the references. 

We agree with Ericsson that it was not improper for 

the Board to consider the evidence presented. In Intelli-
16 INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 

gent Bio-Systems, the petitioner introduced in its reply a 

“new theory of invalidity by reference to new evidence,” 

including a number of nonpatent references that were not 

included in its petition. 821 F.3d at 1369. Here, in contrast, Ericsson did not introduce new references, and 

instead continued to argue, just as it had in its petition, 

that claim 1 would have been obvious over the combination of Li, Yamaura, Zhaung, and Beta.

We also agree with Ericsson that the Board’s finding 

that the combination would have taught or suggested a 

centered core band is supported by substantial evidence. 

Ericsson presented testimony that a skilled artisan would 

have placed the control signals in the center “[i]n order to 

maintain the benefit of Yamaura’s narrowband control 

signals.” J.A. 3217. The Board chose to credit that testimony in finding that the combination disclosed the recited 

limitation. Final Decision, 2016 WL 380219, at *9. 

Although IV attacks the sufficiency of Ericsson’s evidence, 

IV does not cite evidence, e.g., testimony from its own 

expert, that this finding is incorrect. See, e.g., IV’s Br. 47–

53. As there was evidence to support the Board’s finding, 

and no evidence to the contrary, that finding is supported 

by substantial evidence. 

 Finally, IV argues that the combination of Li, 

Yamaura, Zhaung, and Beta does not disclose that “the 

core-band is substantially not wider than a smallest 

possible operating channel bandwidth of the system.” IV 

argues that “substantially not wider” should have been 

understood as a term of magnitude, i.e. “significantly 

narrower than.” IV contends that the plain language of 

the claim, as well as the written description, supports this 

understanding. IV argues that because the combination 

only discloses a core band that is equal to the size of the 

smallest operating channel, under the correct understanding the combination does not disclose this limitation.
INTELLECTUAL VENTURES II LLC v. ERICSSON INC. 17

Ericsson responds that the Board’s understanding is 

correct, because the written description specifically defines the core band as “not greater than the smallest 

operating channel bandwidth,” Ericsson’s Br. 57 (quoting 

’431 patent, col. 5 ll. 1–3), and therefore indicates that the 

term is one of approximation, and not magnitude. Ericsson also argues that the remaining intrinsic evidence 

supports that understanding.

We agree with Ericsson and the Board that a core 

band “substantially not wider than a smallest possible 

operating channel” does not exclude core bands equal in 

width to the smallest possible operating channel. The 

ordinary meaning of “not wider than” is “equal to or 

narrower than.” That understanding, in addition to its 

clear linguistic meaning, is confirmed by the written 

description’s indication that the core band “is not greater 

than the smallest operating channel.” ’431 patent, col. 5 

ll. 2–3. Accordingly, the limitation is met by a core band 

that is as wide as the smallest operating channel, and the 

Board did not err in its understanding. 

IV does not challenge the Board’s finding that the 

combination discloses a core band that is “substantially 

not wider than a smallest possible operating channel” as 

that limitation was understood by the Board. Thus, we 

affirm the Board’s conclusion that claim 1 of the ’431 

patent is unpatentable as obvious. IV does not argue that 

dependent claim 2 is separately patentable, and therefore 

we affirm the Board’s conclusion as to that claim as well. 

CONCLUSION

We have considered the remaining arguments, but 

find them unpersuasive. For the foregoing reasons, the 

decision of the Board is affirmed.

AFFIRMED