In Ericcsson Inc., v. Intellectual Ventures I LLC, IPR2014-00921, Paper 8 (December 16, 2014), the Board instituted inter partes review of claims 23, 24, 60, and 61 of U.S. Patent No. 6,023,783, but not as to claims 1–5 and 38–42.  The Board concluded that a reference may be said to teach away if it “criticize[s], discredit[s], or otherwise discourage[s]” investigation into a patentee’s claimed invention. DePuy Spine Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); accord Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“[A] reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention.”).

The Board noted that a reference relied upon by petitioner characterizes an element as  “necessary,” and therefore does not convey reasonably that one with ordinary skill would view the element as optional, unnecessary, and, thus, subject to being omitted as discretionary. The Board also found that the Petition did not make any meaningful attempt to explain why a skilled artisan would discount the “necessary” nature of the element

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