  United States Court of Appeals
      for the Federal Circuit
                ______________________

 ERICSSON INC., TELEFONAKTIEBOLAGET LM
                 ERICSSON,
                  Appellants

                          v.

        INTELLECTUAL VENTURES I LLC,
                     Appellee
              ______________________

                      2016-1671
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00963.
                 ______________________

                Decided: May 29, 2018
                ______________________

   STEVEN GARRETT SPEARS, Baker & Hostetler LLP,
Houston, TX, argued for appellants. Also represented by
GREGORY MATTHEW MCCLOSKEY, McDermott, Will &
Emery LLP, Boston, MA.

    BYRON LEROY PICKARD, Sterne Kessler Goldstein &
Fox, PLLC, Washington, DC, argued for appellee. Also
represented by LORI A. GORDON, ROSS G. HICKS, MICHAEL
D. SPECHT.
                ______________________
2              ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



    Before PROST, Chief Judge, NEWMAN and WALLACH,
                     Circuit Judges.
    Opinion for the court filed by Circuit Judge NEWMAN.
    Dissenting opinion filed by Circuit Judge WALLACH.
NEWMAN, Circuit Judge.
    Ericsson Incorporated and Telefonaktiebolaget LM
Ericsson (collectively, “Ericsson”) appeal the decision of
the Patent Trial and Appeal Board (“PTAB”) on inter
partes review, in which Ericsson is the Petitioner and
Intellectual Ventures I LLC (“IV”) is the Patent Owner.
The PTAB sustained the patentability of claims 1–16 of
U.S. Patent No. 6,952,408 (“the ’408 patent”). 1
    We conclude that the PTAB erred in its decision with
respect to claim 1, the only claim whose patentability was
analyzed by the PTAB. We reverse as to claim 1, vacate
as to claims 2–16, and remand for determination of pa-
tentability of claims 2–16.
Standards of Review
    PTAB decisions are reviewed in accordance with the
Administrative Procedure Act, 5 U.S.C. § 706(2). Agency
findings of fact are reviewed for support by substantial
evidence in the agency record, and agency rulings of law
are reviewed for correctness in accordance with law. See
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
    “Anticipation” in patent terms means that the claimed
invention is not new; that is, the invention as claimed was
already known. Anticipation is a question of fact, and a


     1 Ericsson Inc. v. Intellectual Ventures I, LLC, No.
IPR2014-00963, Paper No. 29 (P.T.A.B. Oct. 22, 2015)
(“PTAB Dec.”); Paper No. 31 (P.T.A.B. Dec. 22, 2015)
(“Rehearing Dec.”).
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC           3



finding of anticipation requires that every limitation of
the claim is present in a single prior art reference. See,
e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
1341 (Fed. Cir. 2016); In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009).
    “Obviousness” is a matter of law based on underlying
factual findings, and is grounds for unpatentability when
the claimed subject matter is not identically described, if
the subject matter as a whole would have been obvious to
a person having ordinary skill in the field of the inven-
tion. 35 U.S.C. § 103(a); see KSR Int’l, Inc. v. Teleflex,
Inc., 550 U.S. 398, 406–07 (2007). When obviousness is
based on information from a combination of sources, the
question is whether a person of ordinary skill in the field
would have been motivated to select and combine this
information, and with a reasonable expectation of achiev-
ing the desired result. See, e.g., Merck & Cie v. Gnosis
S.p.A., 808 F.3d 829, 833 (Fed. Cir. 2015), cert. denied,
137 S. Ct. 297 (2016).
The ’408 Patent – Institution and Final Decision
    The ’408 patent is entitled “Method of Baseband Fre-
quency Hopping Utilizing Time Division Multiplexed
Mapping between a Radio Transceiver and Digital Signal
Processing Resources.” Frequency hopping is used in
wireless systems in which a basestation communicates
with entities (such as mobile subscribers) on varying radio
frequencies, so as to reduce interference among communi-
cations. The ’408 patent’s “Abstract” describes the meth-
od as follows:
   A method of frequency hopping is supported by a
   basestation having a broadband transceiver. The
   method permits changing physical channels upon
   which mobile subscribers communicate with the
   basestation, wherein the broadband transceiver is
   operated using static transceiver frequencies, the
   method exclusive of switching communication sig-
4             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



    nals between transceivers. In one embodiment,
    the method maps baseband output signals from a
    digital channelizer which represent physical
    channels to ones of digital signal processors repre-
    senting logical channels and baseband input sig-
    nals of a digital combiner to ones of logical
    outputs of digital signal processors according to a
    mapping signal.
’408 patent, at [57]. The PTAB effectively defined “fre-
quency hopping” as “changing from a first of said physical
RF [radio frequency] channels upon which said mobile
subscribers communicate with said basestation to a
second of said physical RF channels, while maintaining a
same logical channel.” PTAB Dec. at 3–4, 19. The parties
agree with this definition. See J.A. 1049 (declaration of
Dr. Stark, Ericsson’s expert); J.A. 3327 (declaration of Dr.
Wells, IV’s expert).
    Figure 1 is “a preferred embodiment,” of the ’408 pa-
tent method, “a block diagram of a wideband digital
basestation making use of a time division multiplex
(TDM) bus according to the invention”:
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC              5



’408 patent, Fig. 1; col. 3, ll. 46–48; col. 4, ll. 12–13. The
“Detailed Description of a Preferred Embodiment” further
describes the basestation and mobile subscribers, and
refers to the European GSM [Global System for Mobile
Communications] frequency hopping standard:
    More particularly, the basestation 10 exchanges
    radio frequency (RF) signals with a number of
    mobile subscriber terminals (mobiles) 40a, 40b.
    The RF carrier signals are modulated with voice
    and/or data (channel) signals which are to be cou-
    pled to the public switched telephone network
    (PSTN) by the basestation 10. The particular
    modulation in use may be any one of a number of
    different wireless (air interface) standards such as
    . . . frequency hopping standards such as the Eu-
    ropean GSM, personal communication network
    (PCN) standards, and the like.
’408 patent, col. 4, ll. 36–48.
    Claim 1 of the ’408 patent is as follows:
    1. A method for frequency hopping in a cellular
    communications system having multiple mobile
    subscribers communicating on a plurality of dif-
    ferent physical RF channels on any time division
    multiplexed scheme with a basestation having a
    broadband transceiver, said method comprising
    the steps of:
    operating said broadband transceiver using a plu-
    rality of transceiver RF frequencies, each of which
    represents one of said physical RF channels; and
    changing from a first of said physical RF channels
    upon which said mobile subscribers communicate
    with said basestation to a second of said physical
    RF channels, while maintaining a same logical
    channel.
6              ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



’408 patent, col. 13, ll. 15–28. Claims 2–16 depend suc-
cessively from claim 1, each with additional limitations.
    Ericsson petitioned for inter partes review of all
claims. The PTAB instituted review of all claims, on two
grounds:
    1) anticipation of claims 1–10 and 12–16 under
    § 102(b) by U.S. Patent No. 5,592,480 (“the ’480
    patent”);
    (2) obviousness of claims 1–16 based on the ’480
    patent together with the GSM Standard “Radio
    Sub-system Link Control, European Telecommu-
    nications Standards Institute, v. 3.8.0” (“the GSM
    standard”) and U.S. Patent No. 5,537,435 (“the
    ’435 patent”). 2
PTAB Dec. 3.
    Both sides presented argument and expert testimony.
The PTAB ruled that claim 1 is neither anticipated nor
obvious. The PTAB did not separately analyze dependent
claims 2–16, and ruled that Ericsson had “not demon-
strated, by a preponderance of the evidence, that any of
claims 1–16 is anticipated by the ’480 patent or obvious
over the ’480 patent, GSM 05.02, and the ’435 patent.”
Id. at 33. The PTAB held all 16 claims patentable, and
adhered to this decision on reconsideration.
    In view of the PTAB’s limitation of its analysis to
claim 1, our review is focused on claim 1. See Michigan v.
EPA, 135 S. Ct. 2699, 2710 (2015) (reciting the “founda-
tional principle of administrative law that a court may
uphold agency action only on the grounds that the agency


    2   The PTAB reported that Ericsson stated at oral
argument that the three-reference combination was only
asserted against claims 3–16. PTAB Dec. 20.
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC             7



invoked when it took the action” (citing S.E.C. v. Chenery
Corp., 318 U.S. 80, 87 (1943)).
    In brief, Ericsson argues that claim 1 is a “generic”
statement of the known method of frequency hopping
implemented at broadband basestations. Ericsson states
that all the limitations of claim 1 are shown in the ’480
patent, and that claim 1 is no more than a broad recita-
tion of the general method of frequency hopping in mobile
communications, as disclosed in the ’480 patent in general
terms. Ericsson states that if any additional content in
the ’408 specification may serve to distinguish the ’480
patent, such content is not present as a limitation to
claim 1. Thus Ericsson argues that claim 1 is anticipated
by the ’480 patent or is obvious from the ’480 patent in
combination with the GSM reference.
                               I
                        THE PRIOR ART
The ’480 Patent
    The PTAB described the ’408 and ’480 patents as “not
related,” but “shar[ing] significant disclosure.” PTAB
Dec. 10. The ’480 patent presents the following “Ab-
stract”:
   A wireless communication system basestation
   making use of a wideband, multichannel digital
   transceiver having incorporated therein a time di-
   vision multiple-access (TDM) bus for providing
   digital samples of a plurality of wireless commu-
   nication channels, wherein the time slot duration
   and frame rate of the TDM bus may be reconfig-
   ured. The invention allows various air interface
   standards, even those having different channel
   bandwidths, to be serviced by the same basesta-
   tion, without having to install additional or differ-
   ent     equipment,     and     by     automatically
   redistributing signal processing resources, elimi-
8              ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



    nating the need to reconfigure the basestation
    when different types of wireless signaling must be
    accommodated.
’480 patent, at [57].
     In Figure 1, the ’480 patent shows “a preferred em-
bodiment” as a “block diagram of a wideband digital
basestation making use of a time division multiplex
(TDM) bus according to the invention.” ’480 patent, col. 4,
ll. 26–28.




   In its “Detailed Description of a Preferred Embodi-
ment,” the ’480 patent describes Figure 1:
    FIG. 1 is a block diagram of a wideband wireless
    digital basestation 10 according to the invention.
    Briefly, the basestation 10 consists of a receive
    antenna 11, one or more wideband digital tuners
    12, one or more digital channelizers 14, a time di-
    vision multiplex (TDM) bus 16, a control bus 17, a
    plurality of digital signal processors (DSPs), a
    first subset of which are programmed to operate
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC                 9



    as demodulators 18-1-1, 18-1-2, . . . , 18-1-P (col-
    lectively, demodulators 18-1); a second subset of
    which are programmed to operate as modulators
    18-2-1, 18-2-2, . . . , 18-2-Q; and a third subset 18-
    u of which are presently idle, transport signal (T-
    1) encoder 20, a T-1 decoder 22, one or more digi-
    tal combiners 24, one or more wideband digital
    exciters 26, a power amplifier 28, a transmit an-
    tenna 29, a basestation control processor (control-
    ler) 30, and a TDM synchronization clock
    generator 32.
’480 patent, col. 4, l. 55 – col. 5, l. 3. The patent further
describes the preferred embodiment:
    More particularly, the basestation 10 exchanges
    radio frequency (RF) signals with a number of
    mobile subscriber terminals (mobiles) 40a, 40b.
    The RF carrier signals are modulated with voice
    and/or data (channel) signals which are to be cou-
    pled to the public switched telephone network
    (PSTN) by the basestation 10. The particular
    modification in used [sic] may be any one of a
    number of different wireless (air interface) stand-
    ards such as . . . frequency hopping standards
    such as the European Groupe Speciale Mobile
    (GSM), personal communication network (PCN)
    standards, and the like.
’480 patent, col. 5, ll. 4–17. The “Detailed Description of a
Preferred Embodiment” for the ’480 patent does not differ
in any meaningful manner from the “Detailed Descrip-
tion” for the ’408 patent quoted ante. In addition, many of
the components of the ’408 patent’s processing of RF
modulated signals are described in a similar manner in
the ’480 patent. Compare ’408 patent, col. 4, l. 53 – col. 5,
l. 56 and col. 6, l. 35 – col. 7, l. 12 with ’480 patent, col. 5,
l. 21 – col. 6, l. 26 and col. 6, l. 60 – col. 7, l. 35; see also
PTAB Dec. 10.
10            ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



    Ericsson does not disagree that the ’408 patent speci-
fication describes additional components used in frequen-
cy hopping. The PTAB stated, “comparing Figure 3 of the
’480 patent with Figure 8 of the ’408 patent, the two
patents describe bus drivers with similar components.
Nevertheless, Figure 3 of the ’480 patent lacks the DP
RAM FHOP 312, Comparator 206, control processor 300,
and RX Ping/PONG 304 components shown in Figure 8 of
the ’408 patent.” PTAB Dec. 11–12. The PTAB found
that these components “implement[] a frequency hopping
functionality” in the ’408 patent. Id. at 12. Ericsson’s
position is that claim 1 of the ’408 patent claims the
general method for frequency hopping in a cellular com-
munication system on a broadband basestation, and that
this general method is disclosed in the ’480 patent refer-
ence.
The GSM Reference
    The GSM mobile communication standard is refer-
enced in both the ’480 patent and the ’408 patent, see
supra. GSM is a mobile communication standard of the
European Telecommunications Standards Institute. The
’480 patent states the GSM “frequency hopping standard”
may be used in cellular communications systems. ’480
patent, col. 5, ll. 9–17. GSM is the “de facto global stand-
ard for mobile communications with over 90% market
share and is available in over 219 countries and territo-
ries.” PTAB Dec. 12 (quoting declaration of Dr. Stark)).
    The GSM reference includes a definition of frequency
hopping and algorithms for mapping logical channels onto
physical channels. See id. at 13 (“GSM 05.02 describes an
algorithm for mapping logical channels onto physical
channels. In particular, GSM 05.02 describes an algo-
rithm for hopping sequence generation.” (internal cita-
tions omitted)). GSM 05.02 in Section 6.2.3 sets forth the
GSM frequency hopping algorithm, reproduced below:
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC         11




J.A. 1447–49 (discussing and setting forth the algorithm);
see also J.A. 1464 (Figure 6) (algorithm diagram). The
’480 patent states support for “a number of different
wireless (air interface) standards” including “frequency
hopping standards such as the European Groupe Speciale
Mobile (GSM), personal communication network (PCN)
standards, and the like.” ’480 patent, col. 5, ll. 4–17.
12            ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



The ’435 Patent 3
    The ’435 patent describes a multichannel wireless
communication “transceiver apparatus employing wide-
band FFT [Fast Fourier Transform] channelizer with
output sample timing adjustment and inverse FFT com-
biner.” ’435 patent, at [54]. Ericsson cited this patent for
“further details regarding digital channelizers and com-
biners in basestations, including dynamic mapping of
digital channelizer outputs to DSP inputs.” PTAB Dec. at
20. The PTAB in its final decision did not discuss the
combination of the ’435 patent with the ’480 patent and
the GSM standard because it did not reach the dependent
claims.
                              II
                PATENTABILITY OF CLAIM 1
Anticipation—The ’480 Patent
    The PTAB recognized the reference to frequency hop-
ping in the ’480 patent. Ericsson’s argument is that claim
1 generally recites frequency hopping, and that every
limitation of claim 1 is in the ’480 patent.
    IV’s expert, Dr. Wells, testified “basestations that
support frequency hopping were known before 1998,”
prior to the 2001 priority date of the ’408 patent.
J.A. 2538–39 (13:6–14:9) (deposition testimony of Dr.
Wells); J.A. 3323–24 (¶40) (declaration of Dr. Wells); see
also J.A. 3252–54, 3260–65 (excerpts from “Ex. 2003 -
GSM System for Mobile Communications” detailing



     3  The ’480 patent, the ’408 patent, and the ’435 pa-
tent all originated with Airnet Communications Corpora-
tion, and are now owned by IV. J.A. 3327(¶49); J.A. 266–
67; ’408 patent, at [73]; see also PTAB Dec. 9, 20.
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC             13



basestations according to the “canonical GSM architec-
ture” in 1992).
   Each term of claim 1, including the terms in the pre-
amble, is recited in the ’480 patent:
   •   The preamble of claim 1 recites a “method for
       frequency hopping in a cellular communica-
       tions system”; this tracks the ’480 patent’s
       “frequency hopping standards such as the
       [GSM]” as may be used in a cellular communi-
       cations system. ’480 patent, col. 5, ll. 6–17,
       [57]; see J.A. 2539 (14:10–21) (deposition tes-
       timony of Dr. Wells).
   •   The preamble recites “multiple mobile sub-
       scribers communicating” with the basestation.
       The ’480 patent recites “the basestation ex-
       changes radio frequency (RF) signals with a
       number of mobile subscriber terminals.” ’480
       patent, col. 5, ll. 4–6; see J.A. 2540 (15:1–19)
       (deposition testimony of Dr. Wells); J.A. 3317
       (¶26) (expert declaration of Dr. Wells).
   •   The preamble requires that the mobile sub-
       scribers are “communicating on a plurality of
       different physical RF channels.” The ’480 pa-
       tent’s basestation “exchanges radio frequency
       (RF) signals with a number of mobile sub-
       scriber terminals” and “[a]s the basestations’
       demands increases, [ ] additional RF channels
       can be serviced.” ’480 patent, col. 5, ll. 4–6;
       col. 12, ll. 41–44; see J.A. 2540 (15:1–19) (dep-
       osition testimony of Dr. Wells); see also J.A.
       3317 (¶26) (expert declaration of Dr. Wells).
   •   The preamble recites the use of “any time di-
       vision multiplexed scheme with a basestation
       having a broadband transceiver.” The ’480
       patent is for a “wideband, multichannel digital
14              ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



         transceiver having incorporated therein a
         time-division multiple-access (TDM) bus.”
         ’480 patent, at [57]; col. 2 l. 63 – col. 3, l. 2.
         The GSM standard’s “access scheme is Time
         Division Multiple Access (TDMA).” J.A. 1424
         (GSM Standard 05.01 (Section 5)); see J.A.
         2541 (16:6–9) (deposition testimony of Dr.
         Wells); J.A. 3318 (¶27) (expert declaration of
         Dr. Wells).
     •   Claim 1, first clause, recites “operating said
         broadband transceiver using a plurality of
         transceiver RF frequencies, each of which rep-
         resents one of said physical RF channels.”
         The ’480 patent’s broadband basestation “ex-
         changes radio frequency (RF) signals with a
         number of mobile subscriber terminals” and
         “[a]s the basestations’ demands increases, [ ]
         additional RF channels can be serviced.” ’480
         patent, col. 5, ll. 3–6; col. 12, ll. 41–44; see J.A.
         2540 (15:1–19) (deposition testimony of Dr.
         Wells); see also J.A. 3317 (¶26) (expert decla-
         ration of Dr. Wells).
     •   Claim 1, second clause, recites “changing from
         a first of said physical RF channels upon
         which said mobile subscribers communicate
         with said basestation to a second of said phys-
         ical RF channels while maintaining the same
         logical channel.” The PTAB defined this as
         frequency hopping. PTAB Dec. 3–4, 19. The
         ’480 patent states that its basestation sup-
         ports use of a number of wireless communica-
         tion standards, including “frequency hopping
         standards such as the European Groupe Spe-
         ciale Mobile (GSM), personal communication
         network (PCN) standards, and the like.” ’480
         patent, col. 5, ll. 4–17; see also J.A. 2552–53
         (27:12–28:1) (deposition testimony of Dr.
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC            15



        Wells) (“One has to keep the same logical
        channel to preserve a call.”); J.A. 3319 (¶30)
        (expert declaration of Dr. Wells) (“The princi-
        ple of GSM frequency hopping, when imple-
        mented, is to change the frequency used for
        transmission (and reception) every TDMA
        frame.”).
    The PTAB acknowledged that there were relevant
disclosures in the ’480 patent, but reasoned that the ’480
patent did not anticipate because frequency hopping was
an “optional . . . functionality.” PTAB Dec. 17. The PTAB
also stated that “[Ericsson] has not shown persuasively
that the ’480 patent discloses ‘changing from a first of said
physical RF channels upon which said mobile subscribers
communicate with said basestation to a second of said
physical RF channels, while maintaining a same logical
channel,’ as recited in claim 1 and each of its dependents
(claims 2–10 and 12–16).” Id. at 19. This statement of
the ’480 disclosure is contrary to the evidence.
    Both the ’480 patent and the ’408 patent provide sub-
stantially identical diagrams of the broadband base
station. Figure 1, shown supra for the ’408 patent, is
substantially identical in the ’480 patent:
16             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



’480 patent, Fig. 1. Both Figures 1 depict the wideband
digital basestation 10 communicating with mobile termi-
nals 40 via radio frequency (RF) signals. Also, Figure 2 of
the ’408 patent and Figure 2 of the ’480 patent show the
same routing of data on and off the TDM bus to the digital
signal processors.
     The PTAB acknowledged that the two patents “share
significant disclosure.” PTAB Dec. 10. Claim 1 of the ’408
patent is directed to the shared disclosure; any differences
in the disclosures are not in claim 1. The PTAB points to
subordinate figures as showing differences between the
’480 and ’408 patents. Id. at 5–6, 12, 27–28. However,
such differences are not reflected in claim 1, whose scope
is indistinguishable from the disclosure of the ’480 patent.
     IV argued before the PTAB that there are differences
in details and in performance; for example, IV’s expert
stated that the method described in the ’480 patent can-
not remap the incoming data fast enough to support
frequency hopping. J.A. 403–08; J.A. 3365 (¶101). This
contradicts the statement in the ’480 patent that the GSM
frequency hopping standard may be used. ’480 patent,
col. 5, ll. 4–17.
     To contradict a reference, an unsupported opinion is
not substantial evidence. See Homeland Housewares,
LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir.
2017) (“[W]e must disregard the testimony of an expert
that is plainly inconsistent with the record, or based on an
incorrect understanding of the claim[s].” (citations and
internal quotation marks omitted) (second alteration in
original)). Although the PTAB adopted the opinion of IV’s
expert and stated on rehearing that it found Ericsson’s
expert lacking in credibility, this is not a matter of credi-
bility but of technological evidence.
    Ericsson agrees that there are differences in the dis-
closures, in that the ’408 specification describes “an added
memory and supporting components shown in the ’408
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC          17



patent’s Figure 8 (corresponding to ’480 Patent Figure 3).”
Ericsson Br. 2–3, 19. Ericsson points out that this added
memory, DP RAM FHOP 312, is not required by any of
the claims. Ericsson states that the PTAB appears to
have misunderstood the technology.
    IV argues that even if the PTAB misunderstood the
technology, the PTAB result is correct. But the specifica-
tion of the ’480 patent teaches that frequency hopping
may be used, and “each and every element” of claim 1 of
the ’408 patent is disclosed in the ’480 patent, “arranged
or combined in the same way as in the claim.” Blue
Calypso, 815 F.3d at 1341 (quoting In re Gleave, 560 F.3d
at 1334). We conclude that substantial evidence does not
support the PTAB’s decision, and that claim 1 is antici-
pated by the disclosure in the ’480 patent.
The Question of Obviousness
    The PTAB held that claim 1 would not have been ob-
vious because Ericsson did not prove a reasonable expec-
tation of success on the part of the skilled artisan. 4 The
PTAB stated that Ericsson did not show that the “obvi-
ousness combination it proposes would have worked for
its intended purpose. For the same reasons, Petitioner
has not shown that a skilled artisan would have a reason-
able expectation of success in combining the teachings of
the ’480 patent and GSM 05.02 in the way Petitioner
proposes.” PTAB Dec. 22.




   4    The PTAB accepted the parties’ agreed statement
that the person of ordinary skill in this field “would have
had at least a B.S. degree in Electrical Engineering,
Computer Engineering, or the like, and at least three
years of additional academic or industry experience.”
PTAB Dec. 21.
18            ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



    Ericsson argues that even if we conclude that claim 1
is not anticipated, it is unpatentable as obvious in view of
the ’480 patent and the GSM reference. IV suggests that
the ’480 patent is deficient as a reference in that it does
not include computer code or algorithm for frequency
hopping. However, the experts were in agreement that a
person having ordinary skill in the field would have
known how to implement frequency hopping. J.A. 2517–
19 (¶¶37–39) (reply declaration of Dr. Stark); J.A. 2538
(13:12–17) (deposition testimony of Dr. Wells).
    The PTAB found that Ericsson failed to demonstrate
the “system of the ’480 patent could be modified to im-
plement frequency hopping through re-programming of
the DP RAM Enable 202 alone.” PTAB Dec. 26. The
PTAB found that because the DP RAM Enable 202 “mere-
ly indicates that a ‘frequency should be put on the bus for
some DSP,’ the basestation controller must re-program
some other component to place appropriate data on TDM
bus 16 or re-program the DSPs to change how they take
data off of TDM bus 16.” Id. at 30 (quoting testimony of
Dr. Stark); see also id. at 27.
    On Petition for Rehearing, Ericsson argued that the
PTAB erred in its understanding of the ’480 subject
matter and ignored Figure 6 of the ’480 patent, wherein
the DP RAM Enable 202 would also be reprogrammed
each time frame by the basestation controller, and that it
would route data off the TDM bus and on to the correct
DSP. The PTAB stated that “[a]s with the DP RAM
Enable 202 of Figure 3, the DP RAM Enable 202 of Figure
6 does not determine which slot is associated with which
DSP. It simply allows data to pass through during an
enabled time slot to FIFO [First In First Out] Data 214,
which clocks data into the DSP associated with the ena-
bled time slot.” Rehearing Dec. 7 (citing ’480 patent, col.
10, ll. 36–43).
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC             19



     Ericsson correctly points out that the ’480 patent’s
Figure 6 diagrams components connected to a single DSP,
and the corresponding description shows that it depicts
the operation of a single TDM FIFO receiver. ’480 patent,
col. 8, ll. 11–18; col. 10, ll. 34–43. The specification makes
clear that each DSP includes its own TDM FIFO receiver.
The patent recites:
    An exemplary DSP demodulator 18-1-1 and modu-
    lator 18-2-1 are also shown in FIG. 2. The de-
    modulator DSP 18-1-1 includes a TDM first-in
    first-out (FIFO) driver 180-1, a TDM FIFO receiv-
    er 182-1, a DSP central processing unit 184-1 and
    program memory 186-1. Similarly, the modulator
    DSP 18-2-1 includes a TDM FIFO driver 180-2, a
    TDM FIFO receiver 182-2, a DSP central pro-
    cessing unit 184-2 and program memory 186-2.
’480 patent, col. 8, ll. 11–18. The ’480 patent states that
Figure 6 is “[a] detailed diagram of the TDM FIFO receiv-
er 182-1.” Id., col. 10, ll. 34–35. The ’480 patent states
that each TDM FIFO Receiver contains, in addition to
other components, an instance of DP-RAM 202. Id., col.
10, ll. 35–36.
    The expert testimony submitted by IV is not to the
contrary. Dr. Wells testified:
    Figs. 3, 5, 6, and 7 show[ ] the instances of DP
    RAM enable 202 (Fig. 3 reproduced below as an
    example). Although all four instances of DP RAM
    enable 202 are shown with the same reference
    designator (“202”), there are multiple instances to
    facilitate data transfer. On the left hand side of
    TDM bus 17, at least two instances are required
    to service each and every DSP (i.e., caller). On
    the right hand side of the TDM bus 17, multiple
    instances are required to service each and every
    DSP (i.e., caller). In a typical GSM case, the
20             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



     number DP RAM enable 202 could easily exceed
     100 separate devices.
J.A. 3356–57 (declaration of Dr. Wells).
    The PTAB’s conclusion that mapping data to a specific
DSP is not accomplished by the DP RAM Enable 202
depicted in Figure 6 is unsupported by substantial evi-
dence. As diagrammed in Figure 6, data can only be
routed off the TDM bus to a single DSP, a single destina-
tion. The DP RAM Enable 202 in Figure 6 of the ’480
patent informs receiver 212 and FIFO DATA 214 that
available data should be retrieved off the TDM bus, and
transmitted onto the corresponding DSP Processor. Each
TDM FIFO Receiver is connected to a single DSP Proces-
sor, and the instance of DP RAM Enable 202 contained in
the TDM FIFO Receiver communicates with its corre-
sponding receiver 212, also contained therein, as to the
appropriate timeslot to pull data off the bus. The ’480
patent states, referencing Figure 8, a “flowchart of [ ]
operations”:
     An available modulator DSP and demodulator
     DSP resource are then identified (step 303) by ex-
     amining a list 33 of free DSP resources main-
     tained in a memory portion 31 of the basestation
     controller 30 (FIG. 1). The list 33 is updated by
     removing the two DSPs once allocated.
     ...
     In the next step (306), the appropriate destination
     and source information is written into the various
     TDM bus drivers and receivers.
     In particular, given a receive channel identifica-
     tion, a receive channel signal time slot on the
     TDM bus is thus identified. The corresponding lo-
     cation of the enable DP-RAM 202 in the TDM DP
     driver 144 associated with this time slot is then
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC             21



    set to a logical “1” in the manner already de-
    scribed.
    Next, a logical “1” is also written into the enable
    DP-RAM in the TDM receiver 182-1 associated
    with the DSP demodulator 18-1 which was identi-
    fied as being an available resource. If the per-
    channel bandwidth is greater than that which can
    be supported by a single timeslot, then a sufficient
    number of logical “1”s are written into the appro-
    priate locations.
    Also, now given a transmit channel identification,
    the free DSP modulator 18-2 is enabled (step 306)
    to use the TDM bus 16, by writing a logical “1” in-
    to the enable DP-RAM of the TDM driver 180-2
    connected to the available one of the DSP modula-
    tors 18-2. To complete the connection, a logical
    “1” is also written into the location of the TDM DP
    receiver 244 associated with the identified trans-
    mit channel.
’480 patent, col. 10, l. 52 – col. 11, l. 27; see also Figs. 2
and 6.
    The DP RAM Enable 202 permits or blocks data to
pass through “an enabled time slot to FIFO Data 214,” as
the PTAB found. But it is this activity across the plurali-
ty of TDM FIFO Receivers, one contained in each DSP in
the ’480 patent’s basestation, as shown in Figure 1, that
actually “determine[s] which slot is associated with which
DSP.” Rehearing Dec. 7 (concluding the opposite); see also
’480 patent, col. 8, ll. 11–18; col. 10, ll. 34–43. The expert
testimony is in accord. J.A. 2879–92 (deposition testimo-
ny of Dr. Stark); J.A. 2513 (¶31) (reply declaration of
Dr. Stark); J.A. 3349–52 (expert declaration of Dr. Wells).
22                ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



    Substantial evidence does not support the PTAB’s rul-
ing of nonobviousness in view of the ’480 patent in combi-
nation with the GSM reference. 5
                                   III
                  PATENTABILITY OF CLAIMS 2–16
    The PTAB did not discuss patentability of dependent
claims 2–16, having found that claim 1, as the broadest
claim, is patentable. Since we now reverse the decision as
to claim 1, the dependent claims require analysis. We
remand for this purpose.
                          CONCLUSION
    We have considered all of the arguments presented by
both sides, and conclude that claim 1 is not patentable.
We reverse the decision as to claim 1. We vacate the
decision as to claims 2–16, and remand for determination
of patentability of claims 2–16.
     REVERSED IN PART, VACATED IN PART, AND
                   REMANDED
                             COSTS
      No costs.




      5 Our colleague in dissent states that we make no
“findings regarding motivation to combine” these refer-
ences. Dissent 9. However, the ’480 patent itself teaches
the combination, reciting “frequency hopping standards
such as the [GSM].” ’480 patent, col. 5, ll. 4–17.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

 ERICSSON INC., TELEFONAKTIEBOLAGET LM
                 ERICSSON,
                  Appellants

                            v.

        INTELLECTUAL VENTURES I LLC,
                     Appellee
              ______________________

                       2016-1671
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00963.
                 ______________________
WALLACH, Circuit Judge, dissenting.
    The Supreme Court has made clear that “[a] court re-
viewing an agency’s adjudicative action should accept the
agency’s factual findings if those findings are supported
by substantial evidence . . . . The court should not sup-
plant the agency’s findings merely by identifying alterna-
tive findings that could be supported by substantial
evidence.” Arkansas v. Oklahoma, 503 U.S. 91, 113
(1992) (citation omitted); see, e.g., Consolo v. Fed. Mar.
Comm’n, 383 U.S. 607, 620 (1966) (explaining that, under
substantial evidence review, “the possibility of drawing
two inconsistent conclusions from the evidence does not
prevent an administrative agency’s finding from being
supported by substantial evidence” (citations omitted)).
2             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



We have applied this principle when reviewing final
written decisions of the U.S. Patent and Trademark
Office’s Patent Trial and Appeal Board (“PTAB”). See,
e.g., Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881
F.3d 1354, 1356 (Fed. Cir. 2018) (similar). By reversing
the PTAB’s findings as to claim 1, 1 the majority contra-
venes this precedent and improperly substitutes its own
factual findings for those of the PTAB. 2 Therefore, I
respectfully dissent.



    1    The PTAB found that claims 1–10 and 12–16 of
U.S. Patent No. 6,952,408 (“the ’408 patent”) were not
anticipated by U.S. Patent No. 5,592,480 (“Carney”) and
that claims 1–16 of the ’408 patent would not have been
obvious over a combination of, inter alia, Carney and
European Telecommunications Standards Institute,
Global System for Mobile Communications, Recommenda-
tion 05.02: Multiplexing and Multiple Access on the
Radio Path, December 1995, Version 3.8.0 (“GSM 05.02”).
See Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-
00963 (P.T.A.B. Oct. 22, 2015) (J.A. 1–34); see also Erics-
son Inc. v. Intellectual Ventures I LLC, IPR2014-00963
(P.T.A.B. Dec. 22, 2015) (J.A. 35–46) (denying request for
rehearing). I use “the Challenged Claims” to refer to
claims 1–10 and 12–16 when discussing anticipation and
to refer to claims 1–16 when discussing obviousness.
    2    The majority finds claim 1 unpatentable for both
anticipation and obviousness, such that much of its anal-
ysis is advisory. See FCC v. Pacifica Found., 438 U.S.
726, 734–35 (1978) (“However appropriate it may be for
an administrative agency to write broadly in an adjudica-
tory proceeding, federal courts have never been empow-
ered to issue advisory opinions.”); cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009) (declining to address
alternative grounds of unpatentability when the court
upholds one such ground). Because the majority holds
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC            3



                         DISCUSSION
I. Substantial Evidence Supports the PTAB’s Determina-
   tion that Carney Does Not Anticipate the Challenged
                         Claims
    “[A] prior art reference will anticipate if it discloses
each and every element of the claimed invention.” Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed.
Cir. 2016) (internal quotation marks, brackets, ellipsis,
and citation omitted). “Anticipation is a question of fact
that we review for substantial evidence.” Id. (citation
omitted). Substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197,
229 (1938) (citations omitted).
    Illustrative claim 1 recites, inter alia, “changing from
a first of said physical [radiofrequency (‘RF’)] channels
upon which said mobile subscribers communicate with
said base[ ]station to a second of said physical RF chan-
nels, while maintaining a same logical channel.” ’408
patent col. 13 ll. 24–27 (the “frequency hopping” limita-
tion). The PTAB found that Appellants Ericsson Inc. and
Telefonaktiebolaget LM Ericsson (together, “Ericsson”)



claim 1 unpatentable for obviousness, it need not address
anticipation. On the other hand, because the majority
holds claim 1 unpatentable as anticipated, it need only
address obviousness with respect to claim 11, as the
PTAB found claim 11 nonobvious but did not determine
whether it was anticipated. See J.A. 3. Nevertheless, I
would find the Challenged Claims neither anticipated nor
obvious and, thus, must address both grounds of un-
patentability. See In re Hodges, 882 F.3d 1107, 1111–17
(Fed. Cir. 2018) (determining that claims were not antici-
pated and then considering whether claims would have
been obvious).
4             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



failed to show by a preponderance of the evidence that
Carney disclosed the “frequency hopping” limitation, such
that Carney did not anticipate the Challenged Claims.
J.A. 19. The majority holds that the PTAB’s finding is
“contrary to the evidence.” Maj. Op. 15. I respectfully
disagree because substantial evidence supports the
PTAB’s finding.
     The majority errs by conducting a more exacting re-
view than substantial evidence requires. In support of its
conclusion, the majority cites Carney’s specification’s
reference to “frequency hopping standards such as the
[Groupe Spéciale Mobile (‘GSM’)], personal communica-
tion network (PCN) standards, and the like.” Carney
col. 5 ll. 14–17; see Maj. Op. 14–15. However, the PTAB
thoroughly considered this passage from Carney, as well
as Ericsson’s expert’s testimony regarding how a person
having ordinary skill in the art (“PHOSITA”) would have
understood it, and found that it did not disclose frequency
hopping. See J.A. 13–18. Specifically, the PTAB found
that “this passage states, at most, that the system de-
scribed in [Carney] supports the modulation specified by
the GSM standard,” J.A. 17, but that Carney “does not
state, explicitly or implicitly, that the described system
implements the optional frequency hopping functionality
of GSM,” J.A. 18. As the PTAB explained, see J.A. 17,
when read in context, Carney refers to the GSM stand-
ard’s modulation functionality, see Carney col. 5 ll. 6–17
(stating that “[t]he RF carrier signals are modulated with
voice and/or data (channel) signals” and that “[t]he par-
ticular modulation in use[] may be any one of a number of
different wireless . . . standards . . . , frequency hopping
standards such as the [GSM] . . . , and the like” (emphases
added)). Appellee Intellectual Ventures I LLC’s (“IV”)
expert testified that the disputed passage “actually
means . . . that [a base station] can support GSM, and
then it characterizes GSM as a frequency hopping stand-
ard. It doesn’t say that it supports frequency hopping.”
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC             5



J.A. 2559; see J.A. 3342 (stating, in IV’s expert’s declara-
tion, that “the hopping feature is an optional portion of
the GSM specification and does not need to be imple-
mented in a base station or deployed by a network opera-
tor” and, thus, Carney “does not indicate that its
base[ ]station is in compliance with the GSM frequency
hopping standard”); see also J.A. 39 (first quoting
J.A. 2559; then citing J.A. 3342). 3 Moreover, when the
PTAB questioned Ericsson’s expert about this disclosure,
he acknowledged that the GSM standard’s frequency
hopping functionality is optional and that its modulation
functionality does not vary, even if the optional frequency
hopping functionality is not employed. See J.A. 672
(Q: “And you can use the same modulation regardless of
whether you are using frequency hopping or not, is that
right?” A: “Exactly. . . . It is all the same.”); see also
J.A. 37–38 (rejecting Ericsson’s contention that the PTAB
misapprehended Ericsson’s expert’s testimony). Taken
together, this constitutes substantial evidence supporting


    3    Although the majority states that IV’s expert’s
testimony “contradict[ed]” Carney, Maj. Op. 16, the major-
ity fails to explain how IV’s expert’s testimony is incon-
sistent with Carney, particularly in light of Carney’s
disclosure of the GSM standard for its modulation rather
than frequency hopping functionality, see id. at 12–17.
IV’s expert’s testimony was consistent with Carney’s
disclosures, and “[t]he PTAB [wa]s entitled to weigh the
credibility of the witnesses.” Elbit, 881 F.3d at 1358
(internal quotation marks and citation omitted); see
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856
(1982) (“Determining the weight and credibility of the
evidence is the special province of the trier of fact.”); see
also J.A. 18 (“[W]e do not credit [Ericsson’s expert]’s
testimony on this point.”), 39 (“We continue to credit [IV’s
expert]’s testimony.”). Therefore, I think it improper to
second guess the PTAB’s credibility determinations here.
6             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



the PTAB’s finding that Carney does not disclose the
“frequency hopping” limitation. See Yangzhou Bestpak
Gifts & Crafts Co. v. United States, 716 F.3d 1370, 1378
(Fed. Cir. 2013) (“[Substantial evidence review] requires
[the agency] to examine the record and articulate a satis-
factory explanation for its action.” (citation omitted)).
     The majority does not explain why this evidence is in-
sufficient to support the PTAB’s finding. See Maj. Op. 12–
17. Instead, it “reweigh[s] th[e] evidence,” In re Warsaw
Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016),
and “identif[ies] alternative findings that could be sup-
ported by substantial evidence,” Arkansas, 503 U.S. at
113; see Maj. Op. 13–15 (stating that “[e]ach term of claim
1 . . . is recited in [Carney],” summarizing the evidence
that purportedly supports its conclusion, and stating that
the PTAB’s opposite conclusion is “contrary to the evi-
dence”). Because “[t]his court does not reweigh evidence
on appeal, but rather determines whether substantial
evidence supports the [PTAB]’s fact findings,” In re NTP,
Inc., 654 F.3d 1279, 1292 (Fed. Cir. 2011), I would affirm
the PTAB’s finding that Carney does not anticipate the
Challenged Claims as supported by substantial evidence.
II. Substantial Evidence Supports the PTAB’s Determina-
  tion that the Challenged Claims Would Not Have Been
  Obvious over a Combination of Carney and GSM 05.02
    Obviousness is a question of law based on underlying
findings of fact, which we review for substantial evidence.
See In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
In assessing whether claims would have been obvious
over a combination of prior art references, we consider,
inter alia, whether a PHOSITA “would have been moti-
vated to combine the teachings of the prior art references
to achieve the claimed invention[] and . . . would have had
a reasonable expectation of success in doing so.” Intelli-
gent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1367–68 (Fed. Cir. 2016) (internal quotation marks
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC            7



and citations omitted). We also consider whether the
combination would have worked for its intended purpose.
See In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016).
    The PTAB determined that Ericsson failed to show
that a PHOSITA “would have had a reasonable expecta-
tion of success in combining the teachings of [Carney] and
GSM 05.02” or that “its proposed combination would have
worked for its intended purpose, as it would not have
performed frequency hopping.” J.A. 32. The majority
concludes that “[s]ubstantial evidence does not support
the PTAB’s ruling of nonobviousness in view of [Carney]
in combination with . . . GSM [05.02].” Maj. Op. 22 (foot-
note omitted). I respectfully disagree and would hold that
substantial evidence supports the PTAB’s finding.
     Once again, the majority conducts a more exacting re-
view than substantial evidence requires. In reaching its
conclusion, the majority fails to explain why the PTAB’s
factual findings are not supported by substantial evi-
dence. See id. at 17–22. Instead, similar to its anticipa-
tion findings, the majority “reweigh[s] th[e] evidence,” In
re Warsaw, 832 F.3d at 1333, and “identif[ies] alternative
findings that could be supported by substantial evidence”
to justify its conclusion of obviousness, Arkansas, 503 U.S.
at 113; see Maj. Op. 21 (finding that Carney’s DP RAM
Enable 202 “determines which slot is associated with
which DSP,” which is directly contrary to the PTAB’s
conclusion (internal quotation marks, brackets, and
citation omitted)); see also J.A. 41 (finding that Carney’s
DP RAM Enable 202 “does not determine which slot is
associated with which DSP” (emphasis added)). However,
the PTAB considered the very evidence cited by the
majority, weighing the testimony of the parties’ experts
against the teachings of the prior art, see J.A. 19–33, and
determined that reprogramming Carney’s DP RAM
Enable 202 would not be sufficient to implement frequen-
cy hopping on the base station, J.A. 26.
8              ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



     For example, Ericsson argued that Carney’s DP RAM
Enable 202 could be reprogrammed to map between RF
channels and DSPs through TDM time slots. See J.A. 25.
Relying on Carney’s disclosures, the PTAB rejected this
argument and determined that the association between
RF channels and DSPs is maintained by Carney’s DP
RAM Data 204, see J.A. 26 (citing Carney col. 10 ll. 4–17),
and that the DP RAM Enable 202 only stores indications
of whether time slots are active or inactive rather than
mapping RF signals to DSPs, see J.A. 27 (citing Carney
col. 9 ll. 59–63, col. 10 ll. 9–17). Moreover, IV’s expert
explained that Carney “cannot generate the frequency
hopping sequence according to . . . GSM 05.02 . . . through
programming the DP RAM [E]nable 202 alone” because
the DP RAM Enable 202 only “is capable of storing 1[]s
and 0[]s representing enabled time slots and associated
logical channels of the DSPs,” J.A. 3353, as the PTAB
explained, see J.A. 25–27. In contrast, the PTAB found
Ericsson’s expert’s testimony to be “inconsistent with the
description in [Carney],” J.A. 29, and “incomplete,”
J.A. 32, and, thus, “g[a]ve his testimony little weight,”
J.A. 29. The PTAB’s thorough findings, which are sup-
ported by detailed citations to the ’408 patent’s specifica-
tion, the prior art references, and the experts’ testimonies,
see J.A. 19–33, 39–42, are more than sufficient to with-
stand substantial evidence review, see Yangzhou Bestpak,
716 F.3d at 1378.
    Even if the majority is correct that the PTAB’s find-
ings regarding reasonable expectation of success are not
supported by substantial evidence, the majority commits
legal error by finding obviousness without identifying a
motivation to combine, a required element of obviousness.
Reasonable expectation of success and motivation to
combine are “two different legal concepts” that should not
be “conflated.” Intelligent Bio-Sys., 821 F.3d at 1367.
Finding the absence of either element is sufficient to
establish nonobviousness. See id. (explaining that, even
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC           9



though the PTAB erroneously “conflated” reasonable
expectation of success and motivation to combine, “it
nevertheless made sufficient factual findings to support
its judgment that the claims at issue are not invalid” by
finding absence of a motivation to combine (emphasis
added)). However, finding only that a PHOSITA had a
reasonable expectation of success is not sufficient to
establish motivation to combine and, thus, obviousness.
See id. (explaining that “one must have a motivation to
combine accompanied by a reasonable expectation” of
success (emphasis added)). Therefore, the PTAB’s finding
that a PHOSITA would not have had a reasonable expec-
tation of success in combining Carney and GSM 05.02 was
sufficient to establish nonobviousness. J.A. 32; see Intel-
ligent Bio-Sys., 821 F.3d at 1367. In contrast, to ade-
quately support reversal, the majority’s finding of a
reasonable expectation of success must be “accompanied
by” a finding of a motivation to combine. Intelligent Bio-
Sys., 821 F.3d at 1367. Nevertheless, the majority neither
makes any findings regarding motivation to combine, see
Maj. Op. 17–22, nor could it, see Intelligent Bio-Sys., 821
F.3d at 1366 (“The presence or absence of a motivation to
combine references in an obviousness determination is a
pure question of fact.” (internal quotation marks and
citation omitted)); see also Ariosa Diagnostics v. Verinata
Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (“[W]e
must not ourselves make factual and discretionary de-
terminations that are for the agency to make.” (citations
omitted)).
    The PTAB’s finding that a PHOSITA would not have
had a reasonable expectation of success in combining
Carney with GSM 05.02 is supported by substantial
evidence, including Carney’s disclosures and IV’s expert’s
testimony. Therefore, I would affirm the PTAB’s finding
of nonobviousness.
10             ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC



III. Dependent Claims 2–16 Are Patentable for the Same
            Reasons as Independent Claim 1
    The majority states that “[t]he PTAB did not discuss
patentability of dependent claims 2–16” and “remand[s
these claims] for th[at] purpose” without explanation.
Maj. Op. 22. However, claims 2–16 rise or fall with
independent claim 1.
     Before the PTAB, the parties did not present devel-
oped arguments regarding dependent claims 2–16, with
the exception of claim 5. See J.A. 19, 33 (finding the
dependent claims patentable for the same reasons as
claim 1); see also Appellants’ Br. 42 (“The [PTAB]’s antici-
pation ruling addressed only claim 1 because IV disputed
only whether [Carney] taught its elements.”), 65 (“Other
than contesting Ericsson’s proof regarding the limitations
of independent claim 1, the only dependent claim that IV
separately defended before the [PTAB] was claim 5.”). In
its final written decision, the PTAB thus designated claim
1 as illustrative, J.A. 7, and the parties did not challenge
that designation on appeal, see generally Appellants’ Br.;
Appellee’s Br. Indeed, the parties’ arguments once again
rest upon claim 1. See Appellants’ Br. 42, 64–66 (stating
that claims 2–16 are unpatentable for the same reasons
as claim 1); Appellee’s Br. 16–50 (failing to separately
argue any of the Challenged Claims). But see Appellee’s
Br. 51–52 (arguing that, should we hold the PTAB erred
in its finding of non-obviousness, claim 5 must be re-
manded because the PTAB failed to address separate
arguments made with respect to its dependent limita-
tion). 4 In light of its determination that claim 1 is un-
patentable, claims 2–4 and 6–16, at minimum, are
therefore unpatentable. See In re Affinity Labs of Tex.,


     4 The majority’s failure to justify its remand of all of
the dependent claims is even more concerning given that
IV seeks remand of only claim 5.
ERICSSON INC.   v. INTELLECTUAL VENTURES I LLC           11



LLC, 856 F.3d 883, 894 n.6 (Fed. Cir. 2017) (finding the
independent claims “dispositive of all” claims because the
appellant-patent-owner “did not argue to the [PTAB] that
the dependent claims were separately patentable
and . . . does not argue the claims separately on appeal”);
In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) (“Since
the claims are not separately argued, they all stand or fall
together.”). Nevertheless, because I would affirm the
PTAB’s determination that claim 1 is not unpatentable, I
also would affirm the PTAB’s conclusion that claims 2–16
are not unpatentable. See In re Kaslow, 707 F.2d at 1376.
                         CONCLUSION
    The majority improperly steps out of the appellate
role and substitutes its own interpretation of the evidence
for the PTAB’s. The proper inquiry, however, is not how
we would have interpreted the evidence in the first in-
stance; it is whether substantial evidence supports the
PTAB’s findings. Even if the majority’s anticipation and
obviousness determinations are supported by substantial
evidence, so are the PTAB’s, such that “two inconsistent
conclusions” may be reasonably drawn from the evidence.
Consolo, 383 U.S. at 620 (citations omitted). Because we
must affirm under such circumstances, I respectfully
dissent.
