Case: 23-1354   Document: 73     Page: 1   Filed: 01/02/2025




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

    HONEYWELL INTERNATIONAL INC., TELIT
     CINTERION DEUTSCHLAND GMBH, FDBA
  THALES DIS AIS DEUTSCHLAND GMBH, SIERRA
   WIRELESS, ULC, FKA SIERRA WIRELESS, INC.,
                   Appellants

                            v.

                 3G LICENSING, S.A.,
                        Appellee
                 ______________________

            2023-1354, 2023-1384, 2023-1407
                ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2021-
 00908.
                  ______________________

                Decided: January 2, 2025
                 ______________________

     ERIK HALVERSON, K&L Gates LLP, San Francisco, CA,
 argued for all appellants.         Appellant Honeywell
 International Inc. also represented by BRIAN PAUL BOZZO,
 Pittsburgh, PA; JEFFREY R. GARGANO, Chicago, IL.

    GUY YONAY, Pearl Cohen Zedek Latzer Baratz LLP,
 New York, NY, for appellant Telit Cinterion Deutschland
 GmbH. Also represented by KYLE AUTERI, I.
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 2       HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




    AMANDA TESSAR, Perkins Coie LLP, Denver, CO, for
 appellant Sierra Wireless, ULC. Also represented by
 RODERICK O’DORISIO.

    DONALD PUCKETT, Devlin Law Firm LLC, Wilmington,
 DE, argued for appellee. Also represented by TIMOTHY
 DEVLIN, ANDREW PETER DEMARCO, ROBERT J. GAJARSA.
                ______________________

       Before DYK, CHEN, and STOLL, Circuit Judges.
     Opinion for the court filed by Circuit Judge DYK.
      Dissenting opinion filed by Circuit Judge STOLL.
 DYK, Circuit Judge.
      Appellants Honeywell International Inc., Telit
 Cinterion Deutschland GmbH, and Sierra Wireless, ULC
 (collectively, “Honeywell”) appeal the Patent Trial and
 Appeal Board’s (“Board”) final written decision in IPR2021-
 00908 declining to hold claims 1, 2, 4–7, 9–13, and 15–23
 of 

 (the “’718 patent”)
 unpatentable as obvious. See Honeywell Int’l, Inc. v. 3G
 Licensing S.A., No. IPR2021-00908, 

 (P.T.A.B. Nov. 14, 2022). We reverse.
                        BACKGROUND
                              I
      In the field of telecommunications, computers and
 other electronic devices send information to one another
 over distance by transmitting and receiving signals. These
 signals are susceptible to degradation from random
 errors—typically caused by interference and noise—that
 can result in the recipient’s receiving a corrupted message.
 Error protection methods reduce the incidence of such
 transmission errors. One common error protection method
 is to encode the original message into a “codeword” and to
 then transmit that codeword instead of the original
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.        3



 message.     That way, even if errors occur during
 transmission, the codeword should still contain enough
 information from the original message that the recipient
 can recover the original meaning.
     The ’718 patent is directed to a coding method for a
 specific kind of information used in third-generation
 mobile communication systems called the Channel Quality
 Indicator, sometimes also referred to as channel quality
 information (“CQI”). The CQI is transmitted from user
 equipment—such as a cell phone—to a base station and
 indicates the quality of the cellular connection that the
 user equipment is receiving. The CQI is an integer
 between 0 and 30, where 0 represents a very weak signal
 and 30 represents a very strong signal. The CQI is
 represented in five bits of binary data (a0, a1, a2, a3, a4),
 where each bit has a value of 1 or 0, and the bits increase
 in significance from left to right. For example, the integer
 9 is represented by the 5-bit sequence (1, 0, 0, 1, 0), with
 the leftmost 1 being the least significant bit and the
 rightmost 0 being the most significant bit (“MSB”).
     The base station responds to CQI from user equipment
 by assigning higher data rates to user equipment reporting
 strong signals and lower data rates to user equipment
 reporting weak signals. As the ’718 patent specification
 explains, the main benefit of modifying data rates in
 response to changes in channel conditions through
 adaptive modulation and coding is the “higher data rate
 available for [user equipment] in favorable positions[,]
 which in turn increases the average throughput.”
 ’718 patent, col. 2, ll. 42–45. “Throughput” refers to the
 data rate, or the amount of information transmitted per
 unit time. Throughput is maximized when the CQI
 received by the base station is accurate and can suffer
 when the CQI is inaccurate because it is infected with
 transmission errors.
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 4        HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




                                II
     In an effort to create a uniform standard for third-
 generation mobile communication systems, the Third-
 generation Partnership Project (“TGPP”) working group
 was established from a group of organizations across the
 globe. The TGPP was charged with developing uniform
 standards regarding the transmission of CQI.                One
 challenge before the TGPP was the fact that not all
 transmission errors are equal—an error in the
 transmission of the a4 bit, the MSB, results in a much
 greater deviation from the original CQI value transmitted
 by the user equipment than an error in the transmission of
 the a0 bit, the least significant bit. Specifically, an error in
 a4 that flips the bit from 1 to 0 or 0 to 1 causes the CQI
 value to change by a value of 16, whereas the same error in
 a0 would cause a corresponding change of only 1.
     Before the critical date of the ’718 patent, February 13,
 2002,1 the TGPP working group was already familiar with
 a (16, 5) Transmit Format Combination Indicator (“TFCI”)
 encoder for encoding a 5-bit CQI signal into a 16-bit
 codeword.2 The (16, 5) TCFI encoder generates a 16-bit


     1   The parties do not dispute that the prior art in the
 petition qualifies as 

(b) prior art under the
 pre-AIA Patent Act, which requires that the reference be in
 public use or on sale in this country more than one year
 prior to the date of application for patent in the United
 States. Because the application that resulted in the
 ’718 patent was filed on February 13, 2003, the critical
 date is February 13, 2002.
     2   An encoding method typically specifies two
 numbers with which the method will be associated (A, B),
 where A represents the number of bits of the output
 codeword, and B represents the number of bits of the input
 signal.
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.           5



 codeword (b0, b1, . . . b15) by combining the five input bits
 (a0, a1, a2, a3, a4) with the five basis sequences Mi,n depicted
 in the basis sequence table below:




 ’718 patent, col. 4, ll. 40–65 (Table 1a). To calculate each
 codeword bit, the following procedure is used: (1) the five
 CQI bits (a0, a1, a2, a3, a4) are multiplied bit-by-bit with the
 corresponding row of the basis sequence table; (2) these
 five multiplication products are added together; (3) the
 resulting sum is divided by 2; and (4) the resulting bit is
 determined from the remainder value, where a remainder
 of 0 results in a codeword bit bi of 0 and a remainder of 1
 results in a codeword bit bi of 1.3
     By November 2001, the TGPP working group had
 determined that the codeword for the 5-bit CQI needed to
 be composed of twenty bits instead of sixteen bits. Various



     3   Each codeword bit is defined by the following
 equation: 𝑏𝑖 = ∑4𝑛=0(𝑎𝑛 × 𝑀𝑖,𝑛 ) mod 2 where 𝑖 = 0, 1, . . . 15.
 See ’718 patent, col. 3, ll. 55–60.
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 6        HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 TGPP members proposed alternatives to extend the
 (16, 5) TCFI encoder by four bits into a (20, 5) encoder.
 Because of the unequal significance of the five CQI bits,
 there was disagreement about what information the
 additional four codeword bits should contain to optimize
 the accuracy of the CQI. The conventional method was to
 protect each bit equally so as to minimize the bit error rate,
 which is the ratio of data bits compromised during
 transmission. A newer method was to provide unequal
 error protection for the more significant bits so as to
 minimize the root-mean-square error, which measures the
 total difference between the received value and the
 intended value rather than the raw number of incorrect
 bits.
      During a TGPP meeting that began on November 19,
 2001, Telefonaktiebolaget LM Ericsson (“Ericsson”)
 proposed modifying the (16, 5) TCFI encoder by “simply
 taking [the] four least reliable information bits [i.e., the
 four least significant bits] and append[ing] these to the end
 of the code words.” J.A. 1741. Later, during a TGPP
 meeting that began on January 8, 2002, Koninklijke
 Philips N.V. (“Philips”) submitted a proposal entitled
 “Coding of Channel Quality Information” (the “Philips
 reference”), which disclosed a method for extending the
 codeword generated by the (16, 5) TFCI encoder by four
 bits by appending the MSB a4 (the bit that, if erroneously
 changed, would create the largest error in the resulting
 message) to the existing 16-bit codeword three times and
 then appending the second most significant bit a3 to the
 modified 19-bit codeword once. See 

 at 1423–24. To
 achieve this result, the Philips reference provided the
 following basis sequence table:
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.       7




 

. The rationale for the method proposed by the
 Philips reference was to “give significant extra protection
 to the MSB, and a little more robustness to the next most
 significant bit” by repeating the MSB three times and
 repeating the second most significant bit once. 

.
 The method was thus primarily concerned with minimizing
 the root-mean-square error rather than focusing on the bit
 error rate, recognizing that unequal bit protection, which
 reduces the root-mean-square error, “would reduce the
 probability that transmission errors would result in large
 errors in the received channel quality value.” 

     On February 16, 2002, shortly after the critical date,
 LG Electronics, Inc. (“LGE”) filed Korean Patent
 Application No. 10-2002-0008350, to which the ’718 patent
 claims priority.   LGE filed U.S. Patent Application
 No. 10/365,498 on February 13, 2003. Throughout the
 proceedings on appeal, the parties have treated claim 1 of
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 8        HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 the ’718 patent as representative of the challenged claims.4
 Claim 1 recites:



     4   The dissent faults us for not separately considering
 independent claim 6 and its dependent claims 7 and 9–13,
 which Honeywell urged before the Board were obvious over
 the Phillips reference as modified by Nokia’s TGPP
 proposal entitled “Channel coding and error detection for
 uplink QI signaling” (the “Nokia reference”). But 3G itself
 agreed that claim 1 was “exemplary,” Appellee’s Br. Cover
 Sheet, and neither party has made any argument about
 challenged claims other than claim 1. Where parties do not
 “separately argue[] the patentability of the remaining
 [challenged claims,] . . . all [challenged claims] rise and fall
 with” the argued claim. Monsanto Tech. LLC v. E.I.
 DuPont de Nemours & Co., 

, 1339 n.1
 (Fed. Cir. 2018); see also Net MoneyIN, Inc. v. VeriSign,
 Inc., 

, 1365 n.2 (Fed. Cir. 2008); In re Kaslow,
 

 (Fed. Cir. 1983).
      Contrary to the dissent’s view, our ruling relies on the
 Philips reference for a particular limitation (which was
 pressed below by Honeywell), not for the entire claim as the
 dissent suggests. Dissent at 4. As the Board found, the
 Nokia reference discloses several other limitations of
 claim 6, none of which 3G disputed below or on appeal. See
 J.A. 37–40.     The Board reasoned that Honeywell’s
 “argument for . . . claim 6 hinge[d] on the same arguments
 [it] made for why one of ordinary skill would have been
 motivated to swap the last two bits of the last row of” the
 Philips reference. J.A. 43. Because the unpatentability
 case came down to a single limitation that was the same in
 substance for both claims, our review of the Board’s
 rejection of Honeywell’s motivation-to-modify-Philips
 argument thus controls the outcome for both claims 1 and
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.           9



         1. A method of coding channel quality
         information (CQI), comprising the steps of:
         providing information bits, a0, a1, a2, a3, and a4;
         providing five basis sequences M i,n for a
         (20, 5) CQI code;
         encoding the information bits by combining the
         information bits with the basis sequences; and
         generating a 20-bit codeword, wherein the
         basis sequences Mi,n are defined as:




 ’718 patent, col. 12, ll. 28–58. There is no dispute that the
 basis sequence table disclosed in the ’718 patent is



 6. (To be sure, the Board also determined that the Nokia
 reference did not disclose switching the last two digits, and
 Honeywell does not make any argument to the contrary.)
 Moreover, 3G at no point on appeal or before the Board, see
 J.A. 542–44, raised the argument now pressed upon by the
 dissent, so it is forfeited.
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 10       HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 identical to the table disclosed in the Philips reference
 except for the last two bits in the last row, which are
 flipped.
     On February 18, 2002, two days after filing the Korean
 patent application and after the critical date of the
 ’718 patent, during a TGPP meeting, LGE proposed a
 modification to the Philips reference flipping the last two
 digits in the table, as disclosed in the Korean patent
 application. The LGE proposal explained that, because
 “there is a trade[-]off between [bit error rate] and [root-
 mean-square] error,” the proper coding method should
 instead focus on optimizing system throughput. J.A. 2608.
 LGE proposed that the TGPP should adopt the basis
 sequence table that was the subject of its patent
 application.
     During a TGPP meeting beginning on April 9, 2002,
 Philips supported LGE’s modification, and Philips and
 LGE requested that the TGPP standards be changed to
 switch the last two digits in the basis sequence specified by
 the Philips reference. On July 2, 2002, LGE’s proposal was
 approved. The ’718 patent issued on January 15, 2008. On
 February 10, 2020, 3G Licensing S.A. (“3G”) obtained
 ownership of the ’718 patent—which effectively claimed
 the TGPP standard for encoding CQI—from LGE. On
 May 10, 2020, 3G filed a complaint for infringement of the
 ’718 patent against Honeywell after Honeywell declined to
 enter into a licensing agreement for the ’718 patent. 3G
 agrees that the challenged ’718 claims are “essential to
 cellular standards including 3G and 4G technologies.” See
 Complaint ¶ 29, Sisvel Int’l S.A. v. Honeywell Int’l, Inc.,
 1:20-cv-00652 (D. Del. May 15, 2020).
                              III
     Honeywell filed a petition for inter partes review as to
 the challenged claims of the ’718 patent with the Board,
 contending that claims 1, 2, 4, 5, and 15–23 are
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.       11



 unpatentable as obvious over the Philips reference and
 that claims 6, 7, and 9–13 are unpatentable as obvious over
 the Philips reference and the Nokia reference, urging that
 the challenged claims were the product of routine
 experimentation and optimization stemming from the
 Philips reference’s teachings. In its final written decision,
 the Board acknowledged that the only difference between
 the Philips reference and the claim 1 was that the 1 and 0
 in the last row of the basis sequences table were switched.
 It nonetheless declined to hold any of the challenged claims
 unpatentable as obvious.
     The Board first found that the petition had not shown
 that a person of ordinary skill in the art would have been
 motivated to switch the last two bits of the table in the
 Philips reference to provide additional protection to the
 MSB. The Board next held that even if the petition had
 sufficiently made this showing, it had not demonstrated
 that a person of ordinary skill in the art “would have
 believed that such a change would be desirable,” J.A. 27,
 explaining that the ’718 patent’s inventor was not
 motivated by a desire to increase the MSB’s protection and
 that there was “no consensus at the relevant time that this
 was the preferred approach that should be the focus of the
 TGPP’s efforts.” Id. at 33. Honeywell filed this timely
 appeal. We have jurisdiction pursuant to 

(a)(4)(A).
                         DISCUSSION
     In reviewing the Board’s determinations on the
 question of obviousness, “[w]e review the Board’s legal
 conclusions de novo and its factual findings for substantial
 evidence.” MCM Portfolio LLC v. Hewlett-Packard Co.,
 

 (Fed. Cir. 2015).          “Substantial
 evidence is ‘such relevant evidence as a reasonable mind
 might accept as adequate to support a conclusion.’” OSI
 Pharms., LLC v. Apotex Inc., 

 (Fed. Cir.
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 12       HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 2019) (quoting Consol. Edison Co. v. N.L.R.B., 

 (1938)).
     A claim is unpatentable as obvious under 

(a) if the differences between the claimed subject
 matter and the prior art are such that the subject matter
 as a whole would have been obvious at the time the
 invention was made to a person of ordinary skill in the art.
 KSR Int’l Co. v. Teleflex Inc., 

 (2007). A
 determination of obviousness “requires finding that a
 person of ordinary skill in the art would have been
 motivated to combine or modify the teachings in the prior
 art and would have had a reasonable expectation of success
 in doing so.” OSI Pharms., 

 (quoting
 Regents of Univ. of Cal. v. Broad Inst., Inc., 

 (Fed. Cir. 2018)).
     Honeywell contends that the Board committed legal
 error and that its findings are not supported by substantial
 evidence. We agree. Because the Board’s final written
 decision is predicated on multiple legal errors and is
 unsupported by substantial evidence, we now reverse.
                               I
     First, the Board improperly based its conclusion of non-
 obviousness on its finding that the ’718 patent’s primary
 motivation was to “focus[] on system throughput” rather
 than to minimize root-mean-square error or bit error rate.
 J.A. 32. It noted 3G’s argument that the “’718 patent is
 concerned with maximizing the entire system throughput,
 not minimizing the [r]oot-[m]ean-[s]quare . . . error of the
 code, minimizing bit error rate . . . of the code, nor
 maximizing the protection of the [most significant bits], as
 disclosed by [the] Philips [reference.]” Id. at 18. The Board
 here concluded that a person of ordinary skill in the art
 would not have been motivated to modify the Philips
 reference to swap the bits to improve protection for the
 MSB because the ’718 patent’s main objective was to
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.         13



 maximize entire system throughput, relying on a portion of
 the ’718 patent specification.5 3G’s defense of the Board’s
 decision follows the same reasoning, proclaiming that
 “system throughput, not [root-mean-square] error
 reduction, is the paradigm that led to the innovations of the
 ’718 patent,” Appellee’s Br. 20, and that “protecting the
 MSB was not the goal or problem sought to be solved by the
 ’718 patent,” id. at 35.
     Both the Board and 3G ignore the Supreme Court’s
 directive in KSR, in which the Court recognized that “the
 problem motivating the patentee may be only one of many
 addressed by the patent’s subject matter” and that,
 accordingly, “any need or problem known in the field of
 endeavor at the time of invention and addressed by the
 patent can provide a reason for combining the elements in
 the manner claimed.” 550 U.S at 420 (emphases added).
     Both prior to and after KSR, “[w]e have repeatedly held
 that the motivation to modify a prior art reference to arrive
 at the claimed invention need not be the same motivation



     5   The Board reasoned:
         [S]ince the HSDPA system has been designed
         in order to increase the system throughput,”
         the ’718 patent explains, “it is desirable to use
         the system throughput as one of the criteria in
         order to select [an] optimum CQI coding
         scheme.” . . . Thus, the invention of the
         ’718 patent seeks to “provide a method for
         generating basis sequences for CQI coding
         capable of maximizing a system throughput.
     J.A. 6 (alterations in original) (first quoting
     ’718 patent, col. 6, ll. 50–53, then quoting id. at
     col. 7, ll. 59–61).
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 that the patentee had.” Alcon Rsch., Ltd. v. Apotex Inc.,
 

 (Fed. Cir. 2012) (citing KSR, 

; In re Kahn, 

, 990 (Fed. Cir. 2006);
 DyStar Textilfarben GmbH v. C.H. Patrick Co., 

 (Fed. Cir. 2006)). Requiring the motivation to
 modify to be the same motivation as that of the patent
 inventor has no basis in obviousness doctrine. KSR directs
 precisely the opposite, explaining that “[i]n determining
 whether the subject matter of a patent claim is obvious,
 neither the particular motivation nor the avowed purpose
 of the patentee controls.” 

. The fact that
 the inventor of the ’718 patent may have had a different or
 even novel motivation that led them to swap the last two
 digits of the Philips reference is irrelevant.
                               II
     Second, the Board’s finding that the IPR petitioners
 “ha[d] not sufficiently shown that [a person of ordinary
 skill in the art] would have been motivated to swap the last
 two bits in the last row of the [Philips reference] in order to
 provide more protection to the [MSB],” J.A. 26–27, is not
 supported by substantial evidence. The uncontroverted
 evidence in the record demonstrates that the Philips
 reference teaches protecting the MSB through redundancy
 and that a person of ordinary skill in the art would
 understand that flipping the two digits in the last row of
 the basis sequence table would repeat the MSB and hence
 increase its protection.
     On its face, the Philips reference teaches that it is
 preferable for “the most significant bits of the data [to be]
 better protected than the least significant bits.” J.A. 1423.
 In the Phillips reference, a4 is the MSB and a3 is the second
 most significant bit, and the reference states that
 extending the basis sequences as disclosed “gives
 significant extra protection to the MSB, and a little more
 robustness to the next most significant bit.” 

 The
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 Board’s finding that the petition failed to show that a
 person of ordinary skill in the art would not understand
 how protecting the MSB was taught by the Philips
 reference is not supported by substantial evidence. In
 making this factual finding, the Board ignored the
 unrebutted statement by Honeywell’s expert Dr. Clark in
 the petition that a person having ordinary skill in the art
 would have understood that the scheme proposed in the
 Philips reference “would have the purpose and effect of
 providing extra protection to the MSB” and that “providing
 extra protection to the MSB would be a desirable goal.” Id.
 at 978.
     Although 3G’s expert Dr. Smith testified at length
 about disagreement among TGPP members about which
 parameters should be prioritized, at no point did he
 attempt to rebut Dr. Clark’s opinion that a person of
 ordinary skill in the art would understand that swapping
 the two digits in the basis sequence would repeat the MSB
 an additional time and provide increased protection to the
 MSB. See J.A. 2047–49. Dr. Smith did not dispute that
 swapping the last-row digits would increase protection to
 the MSB and instead simply disputed whether it was
 understood that doing so would have been desirable. There
 is accordingly no evidence in the record from which a
 reasonable mind could conclude that the petition failed to
 show that a person of ordinary skill in the art would not
 understand that the modification of the Philips reference
 would have increased protection for the MSB, a goal that
 the Philips reference itself recognized.6



     6    The Board relied on Dr. Smith’s testimony that
 “[a]dding all protection to just the MSB removes protection
 for all other bits,” J.A. 27 (alteration in original) (emphases
 removed) (quoting id. at 2538 ¶ 16), in concluding that
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     Contrary to the dissent’s charge that we have taken
 “the extraordinary step of fact finding,” Dissent at 1, we
 hold only that the Board’s conclusion is not supported by
 substantial evidence.
                              III
     Third, the Board’s decision appears to be based in part
 on a conflation between the relevant standards for
 obviousness and anticipation. In its final written decision,
 the Board acknowledged the Philips reference’s
 “recognition that it is beneficial to ‘give significant extra
 protection to the MSB,’” but found it significant that the
 Philips reference “did not propose doing so by swapping the
 last two bits of the last row.” J.A. 33.



 Honeywell had “not sufficiently shown that one of ordinary
 skill would have believed that such a change would be
 desirable.” Id. But on its face, this statement conflicts with
 the plain language of the Philips reference and claimed
 modification. The claimed modification transfers only the
 “little more robustness” from the next most significant bit
 to the MSB, id. at 12 (quoting id. at 1423), not “remov[ing]
 protection for all other bits,” id. at 27 (emphases removed)
 (quoting id. at 2538 ¶ 16).
     The dissent faults us for “discredit[ing],” Dissent at 2,
 Dr. Smith’s testimony; however, we are not required to
 uncritically accept expert testimony that is flatly
 contradicted by the record. See Homeland Housewares,
 LLC v. Whirlpool Corp., 

 (Fed. Cir.
 2017) (“[W]e must disregard the testimony of an expert
 that is plainly inconsistent with the record.”). In any event,
 our cases have consistently held that conclusory expert
 testimony does not qualify as substantial evidence. See TQ
 Delta, LLC v. CISCO Sys., Inc., 

, 1358
 (Fed. Cir. 2019).
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     If the Philips reference did in fact “propose . . .
 swapping the last two bits of the last row,” J.A. 33, the
 Philips reference would anticipate the ’718 patent, and the
 inquiry before the Board would be at an end. See Connell
 v. Sears, Roebuck & Co., 

 (Fed. Cir.
 1983) (“[T]he need to determine obviousness presumes
 anticipation is lacking.”). In according any weight to the
 mere fact that there is a difference in the basis sequence
 tables in the Philips reference and ’718 patent, the Board
 committed legal error by “deviat[ing] impermissibly from
 the invalidity theory set forth in [the] petition.” M & K
 Holdings, Inc. v. Samsung Elecs. Co., Ltd., 

 (Fed. Cir. 2021).
                             IV
     Fourth, the Board erred in finding that there was an
 insufficient motivation to switch the last two bits in the
 Philips reference because of uncertainty as to “what CQI
 coding scheme would be best,” J.A. 28, or the “preferred”
 approach, id. at 33, for the working group to adopt as the
 standard for coding CQI. In particular, the Board’s
 analysis stressed that Honeywell failed to show consensus
 among the working group members during the relevant
 time period that a scheme of unequal error protection
 favoring the MSB was the preferred approach. But
 Honeywell was not required to make this showing.
      We have long recognized that obviousness “does not
 require that a particular combination must be the
 preferred, or the most desirable, combination described in
 the prior art in order to provide motivation for the current
 invention.” Novartis Pharms. Corp. v. West-Ward Pharms.
 Int’l Ltd., 

 (Fed. Cir. 2019) (quoting In
 re Fulton, 

 (Fed. Cir. 2004)); see also
 PAR Pharm., Inc. v. TWI Pharms., Inc., 

,
 1197–98 (Fed. Cir. 2014) (explaining that our case law
 “does not require that the motivation be the best option”).
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 18       HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 Rather, “the question is whether there is something in the
 prior art as a whole to suggest the desirability, and thus
 the obviousness,” of the claimed invention. In re Beattie,
 

 (Fed. Cir. 1992) (quoting Lindemann
 Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
 

 (Fed. Cir. 1984)).
     By failing to recognize that the claimed modification
 needed only to be desirable in light of the prior art and not
 the “best” or “preferred” approach, the Board committed
 legal error. Here, the Philips reference’s disclosed goal of
 “giv[ing] significant extra protection to the MSB,”
 J.A. 1423, provided the motivation for the claimed
 modification.
                        CONCLUSION
     For the foregoing reasons, the decision of the Board is
 reversed.
                        REVERSED
Case: 23-1354     Document: 73     Page: 19   Filed: 01/02/2025




    United States Court of Appeals
        for the Federal Circuit
                    ______________________

    HONEYWELL INTERNATIONAL INC., TELIT
     CINTERION DEUTSCHLAND GMBH, FDBA
  THALES DIS AIS DEUTSCHLAND GMBH, SIERRA
   WIRELESS, ULC, FKA SIERRA WIRELESS, INC.,
                   Appellants

                              v.

                    3G LICENSING, S.A.,
                           Appellee
                    ______________________

                2023-1354, 2023-1384, 2023-1407
                    ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2021-
 00908.
                 ______________________

 STOLL, Circuit Judge, dissenting.
     I agree with the majority’s determination in Part III
 that the Board erred by giving weight to the fact that the
 Philips reference did not propose swapping the last two bits
 of the last row of its basis sequence table. In so doing, the
 Board erroneously conflated obviousness with anticipation.
 This conclusion should result in our vacating the Board’s
 decision for the Board to reevaluate obviousness of
 claims 1–2, 4–5, and 15–23 under the proper legal
 framework. Instead, the majority takes the extraordinary
 step of fact finding, a role not appropriate at the appellate
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 2        HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 stage, making arguments for the parties that they did not
 make and then deciding those arguments. Respectfully,
 this is not our role. This case should be vacated for the
 Board to review the evidence and make fact findings, we
 should not be reversing. I respectfully dissent from the
 majority’s departure from our role as an appellate court.
     This case presents a close factual dispute of whether
 Honeywell proved by preponderant evidence that a skilled
 artisan would have been motivated to swap the last two
 bits in Philips’ basis sequence table without making other
 changes to the table. This case is unique in that the Board
 relied heavily on the history of the 3GPP proceedings,
 including evidence regarding the contemporaneous
 development of the several different prior art CQI coding
 schemes (including the Philips scheme) and the claimed
 CQI coding scheme, as well as a critique of the claimed CQI
 coding scheme relative to the prior art coding schemes. The
 Board relied on that evidence to understand the knowledge
 of a person of ordinary skill in the art at the time of the
 invention and how such a person would have viewed the
 proposed modification to the prior art.              Careful
 consideration of such objective evidence can be extremely
 important in a non-obviousness analysis because it
 “serve[s] to ‘guard against slipping into use of hindsight,’”
 Graham v. John Deere Co. of Kan. City, 

 (1966) (citation omitted).
     Were I the fact finder, perhaps I would have found
 differently than the Board when considering whether a
 person of ordinary skill in the art would have been
 motivated to modify the Philip’s basis sequence table to flip
 the last two numbers in the table without making any
 responsive changes to other parts of the table. But I am
 not the fact finder. Nor is the majority, although the
 majority does appear to reweigh unchallenged evidence on
 appeal. For example, at Footnote 6 of its opinion, the
 majority discredits expert testimony from Dr. Smith, 3G’s
 expert, as allegedly conclusory and contradicted by the
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.       3



 Philips reference notwithstanding that the Board found
 this very testimony credible and Honeywell did not
 challenge it on appeal (even when asked about it at oral
 argument). Specifically, Dr. Smith testified about why one
 of ordinary skill in the art would have considered switching
 the last two bits in Philips’ table to arrive at the claimed
 invention undesirable—i.e., because “[a]dding all
 protection to just the MSB removes protection for all other
 bits,” Majority Op. at 15–16 n.6 (alteration in original)
 (quoting J.A. 27). By switching the last two bits of the
 Philips’ table, protection is removed from the second most
 significant bit and more protection is provided to the most
 significant bit. To be sure, Dr. Smith’s testimony more
 aptly relates to protection for the second most significant
 bit. But Dr. Smith’s testimony is supported by—not
 contradicted by—the Philips reference. In particular,
 Philips’ recognition that “giv[ing] significant extra
 protection to the MSB, and a little more robustness to the
 next most significant bit,” J.A. 1423, is consistent with
 Dr. Smith’s concern that switching the last two bits
 removes protection from the next most significant bit.
 What a prior art reference teaches is a question of fact.
 Apple Inc. v. Samsung Elecs. Co., Ltd., 

 (Fed. Cir. 2016). The majority is not the Board, whose role
 it is to make fact findings about what a person of ordinary
 skill in art would understand a prior art reference to teach
 in this case. I would thus vacate the Board’s decision and
 remand for further proceedings consistent with the
 majority’s reasoning in Part III as to Ground 1 of
 Honeywell’s Petition challenging claims 1–2, 4–5, and 15–
 23 of the ’718 patent.
     Additionally, a complete reversal of the Board’s
 decision is inappropriate for a separate reason.
 Honeywell’s Petition for IPR relied on two separate
 grounds: (1) “Ground 1: Claims 1, 2, 4, 5, and 15–23 are
 Unpatentable Under 

(a) as Obvious Over
 Philips[],” a single-reference obviousness challenge, which
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 4        HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.




 is discussed above; and (2) “Ground 2: Claims 6, 7, and 9–
 13 are Unpatentable Under 

(a) as Obvious
 Over Philips[] and Nokia,” a two-reference combination
 obviousness challenge based on the Philips reference and
 the Nokia reference. J.A. 141. With regards to Ground 2,
 the Board reached three conclusions to hold that
 Honeywell had not proven by preponderant evidence that
 claim 6 and its dependents were obvious over the Philips
 reference and the Nokia reference: (1) “Petitioner has
 failed to prove by a preponderance of the evidence that one
 of ordinary skill would have been motivated to modify
 Philips[],” for the reasons discussed for Ground 1;
 (2) “Nokia does not disclose repeating one of the
 information bits four times, as claim 6 requires, but rather
 discloses that each codeword is ‘extended with the four
 least reliable information bits’”; and (3) “Petitioner has not
 sufficiently shown that one of ordinary skill [in the art]
 would have found it obvious to alter Nokia’s method of
 repeating the four least reliable bits in order to achieve the
 ’718 patent’s method of repeating a single information bit
 four times,” as claim 6 requires. J.A. 43 (citation omitted).
     Honeywell’s Petition does not contend that claim 6 and
 its dependents would have been obvious over the Philips
 reference alone, and it makes no argument on appeal about
 the Nokia reference. The Supreme Court in SAS Institute,
 Inc. v. Iancu, made clear that IPRs are limited to the
 grounds raised in the petition. 

, 363–68
 (2018). Neither the Board nor this court can alter the
 grounds presented for claim 6 and its dependents. And
 Honeywell forfeited any argument regarding the Board’s
 fact findings on the scope and content of the Nokia
 reference. See, e.g., Astellas Pharma, Inc. v. Sandoz Inc.,
 

, 1379 n.4 (Fed. Cir. 2024). Even with the
 majority’s new reading of Philips above, it is for the Board
 to determine, in the first instance, whether a skilled
 artisan at the time of the invention would have been
 motivated to combine Philips and Nokia in the manner
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 HONEYWELL INTERNATIONAL INC . v. 3G LICENSING, S.A.        5



 proposed in the petition.1 Thus, I would, at minimum,
 vacate and remand for further proceedings as to the non-
 obviousness of claims 6–7 and 9–13.
     The majority’s view that we can reverse the Board’s
 unchallenged fact findings with respect to claims 6–7 and
 9–13 because Appellee/Patent Owner 3G identified claim 1
 as an exemplary claim on the inside cover of its appeal brief
 finds no support in law. See Majority Op. at 8–9 n.4. As
 the Supreme Court has made clear, the petitioner sets the
 stage for the issues in an IPR and the appellant identifies
 the issues on appeal. The dissent’s holding that 3G waived
 the Board’s findings in its favor on claims 6–7 and 9–13
 (two of which were not even challenged by Honeywell on
 appeal) simply because it included claim 1 as an exemplary
 claim on the inside cover of its principal brief as required
 by Federal Circuit Rule 32(a)(3) ignores these principles
 and cannot stand.
     While it might seem more expeditious to reverse—
 replacing the Board’s fact finding with our own—this is not
 our role. Accordingly, I dissent.




     1    At oral argument, we asked Honeywell’s counsel to
 clarify whether Honeywell was abandoning its challenge to
 claims 6–7 and 9–13. Counsel asserted that Honeywell
 was not and, in fact, contended that whether remand was
 appropriate for those claims would rise and fall with this
 court’s decision regarding the Philips reference. See Oral
 Arg. at 5:27–7:01, https://oralarguments.cafc.uscourts.gov/
 default.aspx?fl=23-1354_10082024.mp3. This concession
 from Honeywell illustrates that not even the Appellant
 requests a full reversal of the Board’s decision.