Honeywell Int’l Inc. v. 3G Licensing, S.A.

Authored by: Jeremy J. Gustrowsky

In a recent decision, the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) finding that claims of U.S. Patent No. 7,319,718 were not obvious. The patent, now owned by 3G Licensing S.A., covers a method for encoding Channel Quality Indicator (CQI) information used in 3G and 4G mobile communications. The dispute centered on whether minor changes to a prior art coding table—specifically, swapping the last two bits—would have been obvious to someone skilled in the field at the time.

The PTAB had previously ruled in favor of 3G Licensing, finding that Honeywell International Inc. and its co-appellants failed to show a sufficient motivation for a skilled person to make the claimed modification. The Board focused on the patent’s stated goal of maximizing system throughput, rather than minimizing error rates or specifically protecting certain bits, and concluded that there was no consensus in the field that the claimed approach was preferred.

The Federal Circuit disagreed, emphasizing that the law does not require the motivation to modify prior art to match the inventor’s own reasoning. Instead, any known problem or need in the field can provide a valid reason to combine or modify existing technology. The court found that the prior art already taught the desirability of protecting the most significant bit (MSB), and that the modification claimed in the patent was a straightforward way to achieve this. The court also clarified that a claimed invention does not need to be the “best” or “preferred” option in the prior art to be considered obvious—just that it would have been seen as desirable.

This decision serves as a reminder that the obviousness analysis is broader than the inventor’s specific motivation, and that patentability can hinge on whether a modification would have been apparent to a skilled person for any relevant reason.