Category: News Feeds

Ed.
Note:
Welcome
to
our
daily
feature

Trivia
Question
of
the
Day!

Which
District
Court
judge
for
the
Southern
District
of
New
York held
Rudy
Giuliani
in
contempt
yesterday
following
the
former
NYC
mayor’s
discovery
delays
in
Georgia
poll
workers’
attempt
to
satisfy
a
$148
million
defamation
judgment
against
him?

Hint:
The
Trump
nominee
previously
clerked
for
Justice
John
Paul
Stevens
before
following
his
path
to
Biglaw
partnership.

See
the
answer
on
the
next
page.

The
colossal
consumer
electronics
show,


CES,
opened
Sunday
evening,
January
5,
with
a
day
and
half
of
media
days
designed
to
acquaint
the
media
with
developments
in
the
consumer
tech
world.
The


Consumer
Technology
Association

(CTA)
also
provides
a
Tech
Trends
media
presentation
on
Sunday
as
well.
The
media
gets
an
advanced
peek
at
the
exhibitors
at
CES
in
a
Sunday
evening
event
called
Unveiled.
(I
previously
authored
a


preview

of
this
year’s
show
and
explained
why
CES
is
relevant
to
legal). 

Then
on
Monday,
January
6,
big
tech
players
such
as
Samsung,
Toyota
(CES
may
well
be
the
world’s
biggest
auto
show
as
that
industry
increasingly
relies
on
electronics
to
work),
John
Deere
(agriculture
too
is
more
and
more
tech-based),
LG
Electronics,
TCL,
and
Sony
offer
sophisticated
media
press
conferences.

Tech
Trends

The
show
opens
every
year
with
CTA’s
media
presentation
entitled


2025
Tech
Trends
to
Watch.
The
presentation
focuses
on
the
latest
tech
research
and
consumer
tech
trends
expected
at
CES
2025
and
beyond.
While
it’s
focused,
of
course,
on
consumer
technology
trends,
the
ripple
effects
of
these
trends
in
the
legal
industry
are
real.
The
technology
with
some
of
the
most
significant
impacts
on
legal
has
in
fact
been
those
which
lawyers,
as
consumers,
adopt
and
begin
to
use
in
their
work.
Smartphones.
Laptops.
Google.
Even
gen
AI.

The
trends
presentation
is
always
on
the
first
media
day
of
CES.
This
year,
the
presentation
was
given
by


Brian
Comiskey,
CTA
director
of
trends,
and


Melissa
Harrison,
CTA
senior
vice
president.
This
year’s
identified
trends
raise
more
questions
than
they
perhaps
answer
for
legal,
given
the
rapid
evolution
of
AI
and
gen
AI. 

Gen
Z
Flexes
Its
Muscles

One
of
the
top
trends
I


reported

last
year
is
just
as
important
this
year,
if
not
more
so:
Gen
Z’s
continued
power
and
impact
on
the
marketplace
and
the
world
of
work.
(Gen
Z

is
generally
considered
to
be
made
up
of
those
born
between
1996
and
2009).

Some
important
statistics
from
this
year’s
report:

• 
  Gen
  Z
  workers
  will
  make
  up
  27%
  of
  the
  workforce
  by
  2025
• 
  86%
  of
  U.S.
  Gen
  Z
  members
  say
  technology
  is
  essential
  to
  them
• 
  60%
  label
  themselves
  as
  early
  tech
  adopters.
• 
  Gen
  Z
  members
  are
  2.5
  times
  more
  likely
  to
  purchase
  tech
  that
  offers
  multiple
  sustainability
  attributes.

Comiskey
pointed
out
that
Gen
Z
is
the
first
completely
digital
native
generation.
Gen
Zers
never
knew
a
time
when
the
world
was
not
fully
online
and
on
screen.
They
never
knew
a
time
when
the
world’s
information
was
not
instantly
and
completely
available
online
all
the
time. 

The
attitudes,
different
ways
of
accessing
and
viewing
information,
and
technology
expectations
of
Gen
Z
could
very
well
pose
management
challenges
for
those
in
previous
generations.
These
challenges
could
be
particularly
acute
in
legal;
in
no
other
industry
is
age
and
experience
considered
so
important
and
revered
by
older
members.
Few
businesses
have
such
a
reluctance
to
adopt
and
embrace
technology
as
law.
Few
businesses
cling
to
a
business
model
that
penalizes
the
efficiencies
and
innovation
possibilities
technology
brings. 

Yet,
the
implications
of
the
Trends
Report
are
pretty
clear:
The
hesitancy
to
adopt
and
use
technology
and
being
late
adopters
is
anathema
to
Gen
Z.
Clearly,
Gen
Z
has
more
significant
issues
on
their
minds
than
unquestionably
working
more
hours.
How
will
older
lawyers
manage
and
incentivize
Gen
Z
when
they
view
the
world
and
their
technology
experiences
so
differently? 

Beyond
management,
how
can
older
lawyers
persuade
Gen
Z
judges
and
juries
when
they
come
from
such
different
worlds?
All
questions
that
legal
can
ill
afford
to
ignore.

Gen
Z’s
reliance
on
cutting-edge
tech
will
demand
law
firms
provide
tools
that
mirror
this
consumer
experience,
or
risk
alienating
young
talent
and
clients.

Consumer
Marketplace
and
Consumer
Expectations
Are
Changing

Comiskey
pointed
out
that
the
retail
consumer
technology
revenue
grew
3.2%
last
year
in
both
hardware
and
software.
More
importantly,
as
AI
and
Gen
AI
have
rapidly
developed,
the
upgrade
cycle
of
consumers
has
also
increased
as
consumers
seek
access
to
the
latest
and
greatest
tech
tools.
Consumers
use
AI
and
Gen
AI
in
their
daily
lives
and
want
the
technology
that
enables
it.
People
expect
to
collaborate
seamlessly
with
AI.
CTA
reports
a
staggering
93%
of
U.S.
consumers
are
familiar
with
Gen
AI,
and
61%
say
they
already
use
it
at
work.

But
Comiskey
and
Harrison
also
sounded
a
troubling
note:
Increased
tariffs
on
goods
manufactured
in
other
countries
could
result
in
a
huge
decline
in
tech
sales
and
revenue
that
could
top
$190
million.

What
does
all
this
mean
for
legal?
Again,
there
is
a
gap
between
what
legal
does
and
the
expectations
of
its
workers
and
perhaps
even
clients.
Last
year,


a
survey
reported

just
this
gap
as
younger
associates
complained
about
having
to
use
antiquated
tech
to
do
work.
According
to
CTA,
consumers
—
younger
associates
and
even
partners
—
are
used
to
using
state-of-the-art
tech
and
AI
in
their
everyday
consumer
lives. 

How
will
it
be
when
they
can’t
do
the
same
in
their
work
lives?
And
if
tariffs
substantially
increase
the
cost
of
up-to-date
tech,
how
will
legal
respond
when
it
doesn’t
seem
eager
to
adopt
the
newest
and
best
hardware
and
software?

Other
Trends

Comiskey
and
Harrison
talked
about
some
other
trends
that
will
impact
legal.
More
and
more
tech
is
being
devoted
to
longevity
and
healthier
living
opportunities,
precision
medicine,
and
remote
care.
All
these
tools
open
up
possible
legal
issues
as
the
nature
and
standard
of
care
due
to
technology
shifts.
Longevity
means
diseases
that
take
longer
to
manifest
—
like
asbestosis
—
will
have
longer
to
develop,
resulting
in
additional
claims.

Another
trend
is
the
blurring
of
audio,
video,
and
gaming
platforms
into
a
seamless
product
displayed
on
screens
such
as
televisions.
Gaming,
for
example,
may
pivot
from
a
static
platform
to
live-action
and
real-life
settings
for
a
more
immersive
and
active
experience. 

Again,
the
expectations
of
consumers
for
receiving
information
and
being
persuaded
will
be
important
for
lawyers.
Lawyers,
especially
litigators,
need
to
continually
update
their
storytelling
techniques
to
be
sure
that
they
use
the
tools
their
audience
expects.
Tech
is
moving
too
rapidly
to
safely
conclude
that
old
tools
will
still
work
as
well.
Lawyers
also
need
to
understand
that
the
tools
needed
to
reach
Gen
Z
may
differ
from
those
to
reach
Baby
Boomers. 

Another
thing
that
is
more
and
more
obvious:
Driving
is
changing
and
changing
quickly.
It’s
long
been
believed
that
we
are
far
away
from
self-driving
cars,
for
example.
Yet
Comiskey
and
Harrison
pointed
out
that
the
fully
autonomous
Waymo
taxis
may
have
reached
a
tipping
point
with
over
100,000
rides. 

These
developments
will
completely
change
car
accidents
and
disputes,
with
fewer
but
different
types
of
cases.
The
capacity
of
increased
sensors
in
cars
and
cloud
storage
opens
up
new
privacy
issues
that
range
from
traffic
violations
to
insurance
ratings. 

The
Future

Comiskey
and
Harrison
also
tried
their
hands
at
predicting
where
we
were
headed.
Of
course,
both
cited
the
potential
for
AI-based
agents
working
alongside
us
to
reform
various
tasks,
as
I
have


written
before.
Digital
twins
and
“enchanted”
(aka
cute)
robots
will
proliferate.

Comiskey
believes
that
tech
will
become
more
and
more
human-centric
as
data
and
AI
are
used
to
personalize
outcomes.
Harrison
cited
quantum
computing
as
perhaps
upending
our
world
even
more
than
AI
and
Gen
AI.

Unveiled

Tech
Trends
to
Watch

is
always
immediately
followed
by


Unveiled
Las
Vegas,
which
provides
media
with
a
sneak
peek
at
many
of
the
CES
exhibitors
in
advance
of
the
show’s
formal
opening. 

Unveiled
is
a
more
intimate
setting
than
that
of
the
exhibit
floors
in
general
(CES
is
the
only
show
I
know
of
where
you
have
to
stand
in
line
to
visit
a
vendor’s
main
exhibit
space).
By
my
count,
over
200
exhibitors
had
small
booths
in
the
Unveiled
space
in
the
Mandalay
Bay
Convention
Center
for
two
and
a
half
hours
of
time
with
the
media.
Since
all
of
these
exhibitors
then
break
down
and
set
up
in
other
exhibit
locations
for
the
rest
of
the
show,
the
booths
are
small
and
less
overwhelming
—
more
information
sharing
and
less
glitz.

So what did
I
see
at
this
year’s
Unveiled?
Lots
of
things
that
were
consistent
with
the
Trends
Report,
which
highlights
the
consumer
tech/legal
tension.
Things
like
electric
skates
that
would
enable
legal
professionals
to
move
faster
and
save
time.
(Oops.
I
forgot.
That’s
not
necessarily
the
goal
of
many
of
us). 

Lots
of
health-related
products
that
would
enable
remote
monitoring
by
medical
professionals.
Lots
of
cute-looking
little
pet-like
robots
(not
sure
if
these
will
ever
hit
the
mainstream,
but
as
someone
pointed
out,
you
don’t
have
to
let
these
little
critters
out
to relieve themselves
over
and
over). 

Sensors
designed
to
replicate
human
touch
to
enhance
digital
experiences
(feel
tech).
AI
learning
tools.
Neurotechnology
tools,
which
I


previously
discussed.
Flying
cars.
Everyday
AI
glasses.
Devices
to
eliminate
the
need
for
humans
to
vacuum,
clean
pools,
and
do
other
drudge
work.
Hologram
technology
to
replicate
human
images.
Tools
and
devices
designed
to
blur
the
digital
world
with
the
real
world.
Yes,
lots
of
pie
(er,
tech)
in
the
sky.
But
we
can’t
dismiss
the
possibilities.

What’s
the
So
What?

So,
what
does
all
this
mean
for
lawyers
and
legal
professionals?
It’s
hard
to
say
there
is
one
big
thing
that
we
in
law
need
to
be
thinking
about.
Instead,
it
is
clear
that
tech
is
advancing
so
fast
and
in
so
many
unpredictable
ways,
now
more
than
ever
legal
professionals
need
to
be
alert.
We
need
to
understand
more
than
ever
the
risks
and
benefits
of
technology. 

That’s
why
conferences
like
CES
are
so
important,
although
largely
ignored
by
the
profession. Lawyers
must
actively
monitor
consumer
tech
trends
to
anticipate
the
expectations
of
their
clients
and
colleagues.

---

Stephen
Embry
is
a
lawyer,
speaker,
blogger
and
writer.
He
publishes TechLaw
Crossroads,
a
blog
devoted
to
the
examination
of
the
tension
between
technology,
the
law,
and
the
practice
of
law.

It’s
been
an
obsession
of
mine
to
always
look
for
shortcuts.
When
I
was
younger,
it
was
scanning
through
school
textbooks
to
find
the
bold
print
that
might
be
on
the
test
(not
a
great
strategy,
by
the
way).
Years
later,
it
was
identifying
the
fastest
route
to
get
to
a
destination
(this
was
before
Google
Maps
and
Waze).
I
guess
the
same
can
be
said
for
my
approach
to
legal
business
development.
You
can
use
trial
and
error
to
build
that
almighty
book,
or
you
can
choose
to
hack
the
system
to
grow
it
more
efficiently.
I’ve
always
said,
“Winging
it
is
not
a
strategy.”

To
set
the
stage,
I
want
to
share
a
quote
I
wish
I’d
known
growing
up.
Back
then
I’d
hear,
“Practice
makes
perfect.”
Does
it,
though?
The
late
great
Vince
Lombardi
of
Green
Bay
Packers
fame
said
it
quite
differently.
It
was,
“Practice
doesn’t
make
perfect.
Perfect
practice
makes
perfect.”
BOOM!
When
I
heard
this
for
the
first
time
my
head
almost
exploded.
If
you’re
doing
the
same
bad
techniques
or
skills
repeatedly,
are
you
really
improving?
The
same
applies
to
business
development.
If
you’re
networking
at
events
and
also
meeting
with
prospective
clients
using
bad
techniques,
while
also
not
improving,
how
much
money
is
it
costing
you
in
lost
time
and
business?
If
we’re
on
the
same
page
here,
this
article
will
be
a
game-changer
for
you.
Let’s
talk
about
some
business
development
hacks
that
you
may
not
have
considered.

Hack
1:
A
Failure
To
Plan
Is
A
Plan
To
Fail

Let’s
go
back
to
my
previous
statement
that
winging
it
is
not
an
effective
way
of
running
your
day,
let
alone
your
business
development
activities.
Everything
should
be
planned
out
for
the
year
and
then
broken
down
into
actionable
steps.
Write
down
things
like:

• Who
  are
  my
  best
  client
  and
  strategic
  partner
  targets?
• Where
  are
  they
  and
  how
  do
  I
  find
  them?
• Create
  a
  list
  of
  all
  your
  clients,
  friends,
  and
  colleagues.
• Develop
  scripts
  for
  email
  outreach.
• Set
  a
  goal
  for
  how
  many
  meetings
  you
  can
  handle
  in
  a
  week.

I
think
you
get
the
gist.
It’s
critical
to
plan
for
the
year,
down
to
each
day,
to
ensure
business
development
is
a
part
of
it.
Without
a
plan
and
without
calendaring
your
time,
your
client
development
will
always
be
pushed
down
and
away.

Hack
2:
You
Can’t
Manage
What
Isn’t
Measured

This
statement
goes
back
to
perfect
practice,
in
a
way,
because
doing
business
development
isn’t
the
same
as
succeeding
at
it.
It’s
of
critical
importance
to
have
some
form
of
tracking
mechanism
to
not
only
see
your
progress
but
to
understand
what’s
productive
for
you.
For
example,
you
are
attending
four
events
a
month
and
have
no
meetings
to
show
for
it.
It’s
clear
you
aren’t
following
up
with
the
people
you’re
meeting
with
(which
is
a
big
no-no!).
Additionally,
you’re
having
tons
of
great
meetings
but
no
next
steps
or
business
transacted.
You
may
not
be
productively
running
your
meetings.
In
some
instances,
I
call
people
“professional
meeters.”
Funny,
not
funny.

I
highly
recommend
using
a
tracking
journal
or
CRM
(client
relationship
management
program)
to
ensure
you
know
your
numbers
and
can
make
regular
improvements.
Without
knowing
your
history,
you
may
be
doomed
to
repeat
it.
And
many
lawyers
do.

Hack
3:
Become
A
Student
Of
The
Biz-dev
Game

Good
news,
friends!
There’s
a
TON
of
amazing
information
out
there
about
legal
business
development
and
marketing
best
practices.
The
fact
that
you’re
reading
this
article
sets
you
up
to
take
in
more
of
my
content
(and
there’s
A
LOT).
I
have
four
books
and
another
one
on
the
way;
there’s
my
YouTube
channel
under
the
name
Steve
Fretzin;
and
my
“BE
THAT
LAWYER”
podcast
with
over
450
episodes.
There
are
even
scripts
I
provide
that
you
can
read
and
rehearse
to
make
talking
to
people
simpler
and
easier.

Hack
4:
Watch
The
Game
Tapes!

Let’s
face
it,
the
Chicago
Bears
suck.
They
always
do,
and
I
wonder
if
they
are
even
watching
the
game
tapes
to
prepare
for
next
week’s
game.
In
client
development,
are
you
watching
your
own
game
tapes?
Now,
obviously,
you’re
not
recording
the
meetings
you
go
on,
but
maybe
you
should
review
your
notes.
What
was
your
game
plan
going
in
and
what
actually
happened?
Rapidly
debriefing
your
meetings
could
be
highly
revealing
as
you
find
gaps
and
missteps
that
have
led
to
being
ghosted
or
losing
new
client
opportunities.
Failure
to
reflect,
learn,
and
improve
will
create
long-term
setbacks
in
growing
a
significant
book.

Hack
5:
Take
The
Shortcut
And
Invest
In
Yourself

Here’s
a
hack
that
might
sound
self-serving,
but
it
works:
Consider
hiring
a
professional
coach
to
evaluate
your
biz-dev
skills.
Whether
you’re
starting
with
no
book
of
business
or
managing
millions,
everyone
has
room
to
grow.
I’ve
yet
to
meet
a
lawyer
without
the
potential
for
improvement.
Last
week
I
met
a
lawyer
who
claimed
to
have
over
10
years
of
business
development
experience.
What
I
observed
from
speaking
with
him
was
that
he
had
one
year
of
biz-dev
experience
ten
times.
Makes
you
think,
right?

Take
a
moment
and
think
about
how
you
became
a
great
lawyer.
You
didn’t
get
there
by
accident
—
you
had
mentors,
training,
and
years
of
experience.
So
why
approach
business
development
any
differently?
Investing
in
yourself
is
THE
shortcut
to
building
a
stronger,
more
sustainable
practice.

Ultimately,
it’s
up
to
you
to
look
inward
and
figure
out
how
to
proceed
in
this
coming
year.
I’ve
made
it
abundantly
clear
that
planning,
tracking,
rehearsing,
and
debriefing
can
all
make
a
difference
in
your
biz-dev
game.
The
goal
for
anyone
I
coach
is
efficiency
and
results.
Your
knowledge
of
the
law
and
your
client
base
are
the
two
things
that
you
can
take
with
you
in
this
less-than-stable
world
we
live
in.
Take
charge
of
your
future
by
mastering
these
hacks
—
and
watch
your
success
soar.

---

Steve
Fretzin
is
a
bestselling
author,
host
of
the
BE
THAT
LAWYER
Podcast,
and
business
development
coach
exclusively
for
attorneys.
Steve
has
committed
his
career
to
helping
lawyers
learn
key
growth
skills
not
currently
taught
in
law
school.
His
clients
soon
become
top
rainmakers
and
credit
Steve’s
program
and
coaching
for
their
success.
He
can
be
reached
directly
by
email
at [email protected].
Or
you
can
easily
find
him
on
his
website
at www.fretzin.com or
LinkedIn
at https://www.linkedin.com/in/stevefretzin/.

Welcome
to
2025,
which
I
hope
will
be
a
year
of
accomplishment
and
good
health
for
the
entire
ATL
readership.
As
patent
litigation
aficionados,
is
there
a
better
way
to
start
the
year
than
to
take
a
close
look
at
the
first
Federal
Circuit

decision
released?
I
can’t
think
of
one,
especially
when
the
decision
in
question
was
deemed
precedential
—
and
had
a
dissenting
opinion
as
well.
Add
in
that
the
decision
reiterated
some
important
considerations
on
one
of
patent
law’s
cardinal
issues,
obviousness,
and
it
is
clear
that
this
first
effort
from
the
CAFC
in
2025
is
worth
our
attention.
So
let’s
dive
in.

To
start,
it
helps
to
know
the
backstory
of
the
patent
that
the
CAFC
considered
on
appeal.
The
patent
owner
and
appellee,

3G
Licensing
S.A.,
is
a
subsidiary
of
Sisvel,
a
well-known
player
in
the
patent
monetization
space.
While
the
“3G
Joint
Licensing
Programme”
that
3G
Licensing
managed
“is
no
longer
active”
according
to
Sisvel’s
website,
Sisvel
claims
to
still
have
over
a
dozen
“active
licensing
programmes”
and
over
1,500
patents
owned.
At
issue
in
the
appeal
was
the
PTAB’s
2022
decision
upholding
the
validity
of
3G’s
‘718
patent,
which
3G
had
acquired
from
LG
Electronics
in
February
2020.
As
is
often
the
case
with
experienced
patent
monetization
outfits,
that
acquisition
was
swiftly
followed
by
assertion,
in
the
form
of
a
May
2020
complaint
against
Honeywell.

In
response,
Honeywell
and
other
3G
licensing
targets
filed
an
IPR
against
the
‘718
patent,
arguing
that
there
was
“nothing
inventive
about
the
encoding
scheme
claimed
in
the
’718
patent;
rather,
the
basis
sequences
and
mathematical
operations
claimed
by
LGE
are
a
trivial,
and
obvious,
modification
of
a
prior
art
proposal
by
Koninklijke
Philips
N.V.”
According
to
the
IPR
petition,
“the
only
difference
between
the
prior
art
and
the
’718
patent
is
that
the
last
two
bits
of
the
last
row
of
the
basis
sequences
are
flip-flopped,”
so
that
98
out
of
100
bits
were
identical
between
the
basis
sequences
disclosed
in
the
prior
art
and
the
‘718
patent.
Still,
the
PTAB
refused
to
find
the
‘718
patent
obvious,
leading
to
the
CAFC
appeal
under
discussion.

As
characterized
by
the
majority,
the
thrust
of
the
‘718
patent
involved
methods
for
optimizing
the
accuracy
of
the
information
based
from
a
cellphone
to
a
base
station
regarding
signal
strength,
characterized
in
the
art
as
the
Channel
Quality
Indicator
or
CQI.
The
more
accurate
the
CQI
information,
the
better
the
performance
of
the
communication
system.
As
with
many
other
aspects
of
wireless
communication,
a
standard
formed
around
CQI
transmission.
In
support
of
that
effort,
a
decision
was
taken
to
extend
the
encoder
length
by
four
bits,
raising
the
question
of
how
best
to
handle
that
extension
in
a
way
that
“would
reduce
the
probability
that
transmission
errors
would
result
in
large
errors
in
the
received
channel
quality
value.”

The
initial
solution
to
the
question
of
how
to
avoid
errors
in
CQI
transmission
was
suggested
by
Philips,
whose
submitted
proposal
became
the
key
prior
art
reference
to
the
‘718
patent.
For
its
part,
LG
filed
a
Korean
application
that
led
to
the
‘718
patent
shortly
after
the
publication
of
the
Philips
reference,
whereby
LG,
“two
days
after
filing
the
Korean
patent
application
…
proposed
a
modification
to
the
Philips
reference
flipping
the
last
two
digits
in
the
table,
as
disclosed
in
the
Korean
patent
application.”
That
proposal
was
approved,
so
that
the
‘718
patent
“effectively
claimed
the
TGPP
standard
for
encoding
CQI.”
Needless
to
say,
patents
that
claim
standards
are
valuable,
unless
they
are
invalid.

With
that
background,
the
majority
turned
to
its
review
of
the
PTAB’s
decision
upholding
the
‘718
patent’s
validity,
even
as
it
“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.”
In
reversing
the
PTAB,
the
majority
identified
“multiple
legal
errors”
starting
with
the
conclusion
that
one
of
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
maximize
entire
system
throughput.”
Citing
the
seminal
obviousness
decision,

KSR,
the
majority
upbraided
the
PTAB
for
forgetting
“that
the
motivation
to
modify
a
prior
art
reference
to
arrive
at
the
claimed
invention
need
not
be
the
same
motivation
that
the
patentee
had.”
Next,
the
majority
focused
on
the
fact
that
even
3G’s
expert
“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.”
As
a
result,
the
majority
found
that
the
PTAB’s
decision
was
“not
supported
by
substantial
evidence”
as
it
ignored
the
unrebutted
expert
opinion
“that
swapping
the
two
digits
in
the
basis
sequence
would
repeat
the
MSB
an
additional
time
and
provide
increased
protection
to
the
MSB.”

In
addition,
the
majority
took
issue
with
the
fact
that
the
PTAB
appeared
to
apply
the
stricter
anticipation
invalidity
standard
to
the
petition,
rather
than
considering
the
arguments
based
on
the
obviousness
standard
that
was
actually
argued.
Likewise,
the
majority
also
criticized
the
PTAB’s
decision
upholding
validity
to
the
the
extent
that
it
failed
to
“recognize
that
the
claimed
modification
needed
only
to
be
desirable
in
light
of
the
prior
art
and
not
the
‘best’
or
‘preferred’
approach”
—
with
the
Philips
reference
itself
disclosing
the
motivation
for
the
modification
claimed
in
the
‘718
patent.

In
dissent,
Judge
Stoll
agreed
with
the
majority
that
the
PTAB
“erroneously
conflated
obviousness
with
anticipation”
in
evaluating
the
import
of
the
Philips
reference’s
failure
to
propose
the
two-bit
swap
disclosed
in
the
‘718
patent.
For
Stoll,
the
proper
disposition
of
the
appeal
would
have
been
a
remand
to
the
PTAB,
not
the
reversal
entered
by
the
majority.
In
her
view,
the
majority’s
reversal
overstepped
the
role
of
the
appellate
court,
as
the
underlying
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”
—
and
the
CAFC
is
not
a
fact
finder.
Instead,
it
is
the
job
of
the
PTAB
“to
make
fact
findings
about
what
a
person
of
ordinary
skill
in
art
would
understand
a
prior
art
reference
to
teach
in
this
case”
—
a
mandate
that
the
majority
took
away
with
its
reversal.

Ultimately,
this
decision
highlights
the
continued
importance
of
the
CAFC
in
terms
of
policing
the
PTAB
and
making
sure
that
its
precedents
are
being
followed
on
key
issues
like
obviousness.
At
the
same
time,
the
dissent
raises
the
question
—
not
for
the
first
time,
as
any
CAFC
watcher
knows
—
of
whether
CAFC
panels
are
too
quick
to
make
factual
findings
that
support
their
desired
conclusions,
even
when
those
actions
conflict
with
principles
of
appellate
review.
We
are
just
getting
started
in
2025
and
there
is
already
a
strong
example
of
obvious
disagreement
to
digest.

Please
feel
free
to
send
comments
or
questions
to
me
at

[email protected]
or
via
Twitter:

@gkroub.
Any
topic
suggestions
or
thoughts
are
most
welcome.

---

Gaston
Kroub
lives
in
Brooklyn
and
is
a
founding
partner
of



Kroub,
Silbersher
&
Kolmykov
PLLC,
an
intellectual
property
litigation
boutique,
and Markman
Advisors
LLC,
a
leading
consultancy
on
patent
issues
for
the
investment
community.
Gaston’s
practice
focuses
on
intellectual
property
litigation
and
related
counseling,
with
a
strong
focus
on
patent
matters.
You
can
reach
him
at [email protected] or
follow
him
on
Twitter: @gkroub.