Category Archives: Obviousness

PTAB Needed to Do A Better Job Supporting its Obviousness Determination in Inter Partes Reexamination

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In Icon Health and Fitness, Inc. v. Stava, Inc., [2016-1475] (February 27, 2017), the Federal Circuit vacated-in-part, affirmed-in-part, and remanded, the Board’s Decision in an appeal of a inter partes reexamination.

Ikon argued that the Examiner erred when he extensively cited to statements in the expert declarations submitted by Stava.  The Federal Circuit said that there is no per se prohibition against relying on an expert’s declaration in support of factual findings underlying a legal conclusion of obviousness solely because the declaration states that something “would have been obvious.”  To determine if an expert’s statement is directed to factual findings or the legal conclusion of obviousness, the court looks to the statement not in isolation, but in the context of the whole declaration.

As to claims 46, 57–62, 65, 74, 98-100, the Federal Circuit found that neither the PTAB nor the Examiner made the requisite factual findings or provided the attendant explanation, finding that both purported to incorporate by reference arguments drafted by Strava’s attorneys.  Thus the Federal Circuit vacated the decision and remanded the case for additional PTAB findings and explanation.  As to claim 43, 71, and 86, the Federal Circuit disagreed with Ikon, and found that The PTAB made the requisite factual findings with an adequate evidentiary basis and provided the attendant explanation.

This cases goes back to the Board, but O’Malley would have simply reversed, since the Board failed to meet its duty.  While certainly a pro-patentee position, it pins the fate of the challenger on the competence of the Board and the Examiner below, rather than the merits of the invalidity case.

 

Hindsight Cannot be the Thread that Stitches the Prior Art Patches into the Claimed Invention

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In Metalcraft of Mayville, Inc., v. The Toro Company, [2016-2433, 2016-2514] (February 16, 2017), the Federal Circuit affirmed a modified preliminary injunction against Toro’s continued infringement of U.S. Patent No. 8,186,475 on platform suspension systems for lawnmowers.

The claims required “an operator platform that supports the seat and an entire body of an operator during use of the utility vehicle,” while Toro maintained that because part of the user’s body were supported by the controls, which were not mounted on the operator platform, its accused lawnmowers do not meet the limitation “an entire body of an operator.”

On appeal Toro argued that the district court’s construction of “an entire body of an operator” was improper because it excludes the operator’s hands and arms. The Federal Circuit disagreed, finding that nowhere did the district court conclude that “an entire body of an operator” excluded the operator’s arms and hands.  The Federal Circuit said that the patent makes clear that it is the suspended operator platform that supports “an entire body of an operator” and that the operator platform is a separate and distinct element from the steering controls. However this really did not address Toro’s argument that if the controls are connected to the platform, then the platform supports the users entire body, but when the controls are attached to something else, something else helps support the user’s body.

Toro also argued that if the steering controls are not mounted on
the operator platform, the operator’s hands will not be isolated from shock loads. However, the Federal Circuit rejected this argument as importing limitations into the claims.

On the question of validity, the district court rejected Toro’s obviousness contention because a patent composed of
several elements is not proved obvious merely by demonstrating
that each of its elements was, independently,
known in the prior art.  The district court said that Toro provided “no reason, and the Court cannot imagine one, that a person of ordinary skill in this field would combine a motorcycle shock with a suspended truck cab and come up with a suspended operator platform.”

The Federal Circuit agreed that Toro provided no explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.  The Federal Circuit said that while it understands that the obviousness
analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, it also recognizes that it “cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”

The Federal CIrcuit also agreed with the district court that there was irreparable harm, because “it is impossible to quantify the damages caused by the loss of a potentially lifelong customer.”

Finally, the Federal Circuit agreed with the scope of the injunction, rejecting Toro’s argument that that it was too broad.

Just Because One Could Doesn’t Mean One Would

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In Personal Web Technologies, LLC v. Apple, Inc., [2016-1174] (February 14, 2017), the Federal Circuit affirmed the Board’s claim construction, but vacated the Board’s obviousness determination because the Board did not adequately support its findings that the prior art disclosed all elements of the challenged claims and that a relevant skilled artisan would have had a motivation to combine the prior-art references to produce the claimed inventions.

The Federal Circuit said that in the obviousness theory presented by Apple and adopted by the Board, the Board had to make findings, supported by evidence and explanation, on two points.  First, the Board had to find all of the elements of the ’310 patent claims at issue.  Second, the Board had to find that a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed by the ’310 patent.

The Federal Circuit noted that in KSR the Supreme Court said “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does” and added that “[t]o facilitate review, this analysis should be made explicit.”

The Federal Circuit said that in order to allow effective judicial review, the agency is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.  The Federal Circuit concluded that the Board’s decision was inadequate; it found that the Board did not sufficiently explain and support the conclusions that (1) the references disclose all of the elements recited in the challenged claims and (2) a relevant skilled artisan would have been motivated to combine the art in the way the ’310 patent claims and reasonably expected success.

The Federal Circuit noted that the Board’s decision cited a different reference for an element than Apple asserted in its Petition, and the Board’s citation to Apple’s petition was incorrect.  The Federal Circuit further noted that the Board’s analysis did not address motivation.  The Federal Circuit found that the Board’s reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. The Federal Circuit said that is not enough: it does not imply a motivation to pick out those references and combine them to arrive at the claimed invention.

The Federal Circuit said that the Board’s reasoning does not meet
the requirements for a sustainable obviousness determination
in this case.  The Federal Circuit explained that the remand is not merely for explanation or clarification of what the Board meant in the decision; the remand is for the Board to reconsider the merits of the obviousness challenge.

If the PTAB Doesn’t Say Why the Invention is Obvious, the Federal Circuit Has Nothing to Affirm

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In re Nuvasive, Inc., [2015-1670] (December 7, 2016), the Federal Circuit vacated and remanded the PTAB Decision finding claims of U.S. Patent No. 8,361,156 invalid for obviousness.  The Federal Circuit found that Nuvasive waived its argument that asserted references weren’t sufficiently public to qualify as printed publications. However, the on issue of obviousness, the Federal Circuit Federal Circuit sided with Nuvasive.

The Federal Circuit said that in assessing the prior art, the PTAB “consider[s]
whether a PHOSITA would have been motivated to combine the prior art to achieve the claimed invention.”  The Federal Circuit said that the factual inquiry whether to combine references must be “thorough and searching,” and that the need for specificity pervades its authority on the PTAB’s findings on motivation to combine.

Nuvasive pointed out that the Final Written Decision did not make adequately explained findings of the motivation to combine, relying upon a single conclusory statement by petitioner’s expert.  The Federal Circuit agreed, noting:

Two distinct yet related principles are relevant to our review. First, the PTAB must make the necessary findings and have an adequate “evidentiary basis for its
findings.”  . . . Second, the PTAB “must examine the relevant data and articulate a satisfactory explanation for its action including a rational  connection between the facts found and the choice made.”  The Federal Circuit said that the PTAB must provide “a reasoned basis for the agency’s action,” and it will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.

The Federal Circuit identified several instances with insufficient articulations of motivation: First, conclusory statements alone are insufficient; instead the finding must be supported by a “reasoned explanation.” Second, it is not adequate to
summarize and reject arguments without explaining why the PTAB accepts the prevailing argument.  Third although reliance on common sense may be appropriate in some circumstances, the PTAB cannot rely solely on common knowledge or common sense to support its findings.

Turning to the decision before it, the Federal Circuit said that the PTAB failed to explain the reason why a PHOSITA would have been  motivated to modify the prior art.  While the PTAB rejected Nuvasive’s arguments that the invention was not obvious, the PTAB never actually made an explanation-supported finding that the evidence affirmatively proved that the PHOSITA would modify the prior art as proposed by petitioner.

Because it could not reasonably discern the PTAB’s reasoning as to motivation
to combine, judicial review cannot meaningfully be achieved, so the Federal Circuit
vacated and the case remanded for additional PTAB findings and explanations regarding the PHOSITA’s motivation to combine the prior art references.

Substantial Evidence Supports Determination of Reasonable Expectation of Success

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In In re Efthymiopoulos, [2016-1003] (October 18, 2016) the Federal Circuit affirmed the PTAB decision that the claimed invention relating to the administration or an anti-influeza drug “by inhalation through the mouth alone” was obvious.

There is no dispute that Von Itzstein I discloses the use of zanamivir to treat and prevent influenza. There is also no dispute that Von Itzstein II discloses several pages of different administration methods for an adjacent homologue of zanamivir to achieve the same result—treating or preventing influenza, expressly discloses administration
through “oral,” “nasal,” or other forms “suitable for administration
by inhalation,” among other methodologies.

Efthymiopoulos’s argument that a skilled artisan would not reasonably expect zanamivir to be effective if administered through oral inhalation is also unpersuasive.  The Federal Circuit found that substantial evidence supports the determination that a skilled artisan would have a reasonable expectation of success in combining the Von Itzstein references.   Efthymiopoulos further argued that the Board disregarded its evidence of unexpected results, namely the testimony of Dr. Hayden. However the Federal Circuit found that the record showed that the Board thoroughly considered and discussed
Dr. Hayden’s declaration in its decision and found that Dr. Hayden’s testimony insufficient to overcome the prima facie case of obviousness.

 

 

It was Error Not to Consider Secondary Considerations, But They Wouldn’t Have Made a Difference

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In ClassCo, Inc. v. Apple, Inc., [2015-1853] (September 22, 2016), the Federal Circuit affirmed a PTAB decision affirming an Examiner’s rejection of claims to a call-screening
system that verbally announces a caller’s identity before the call is connected.as obvious under 35 USC 103.

The Federal Circuit rejected the reexam applicant’s that the combination of references was inconsistent with KSR, noting:

Contrary to ClassCo’s argument, KSR does not require that a combination only unite old elements without changing their respective functions. KSR, 550 U.S. at 416. Instead, KSR teaches that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. And it explains that the ordinary artisan recognizes “that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. The rationale of KSR does not support ClassCo’s theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.

The Federal Circuit concluded that the Board properly applied a flexible approach mandated by KSR.

The Federal Circuit did find that the Board erred in dismissing some of the objective evidence of non-obviousness, noting that it has previously explained that “when secondary considerations are present, though they are not always dispositive,
it is error not to consider them.”  The Federal Circuit said that a determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.

However, the Federal Circuit found that the Board correctly determined that much of the evidence deserved no weight because it did not have a nexus to the merits of the claimed invention.  However as to some of the evidence there was a nexus.  The Federal Circuit explained that nexus depends on whether the claims are commensurate in scope with the secondary considerations.  The Federal Circuit noted that dependent claims contained the touted features, and that it was reasonable to assume that the underlying independent claim includes these features.  Even though the indepdent claims encompassed other embodiments as well, the Federal Circuit further noted that it has not required a patentee to produce objective evidence of nonobviousness for every potential embodiment of the claim. A patent applicant ‘need not sell every conceivable embodiment of the claims in order to rely upon objective
indicia of nonobviousness.

However, despite finding error in the Board’s according no weight to the evidence of secondary considerations, the Federal Circuit found no error in the Board’s ultimate conclusion of obviousness.  The Federal Circuit said that the value that the evidence of secondary consideratons possesses in establishing nonobviousness is “not strong” in comparison to the findings and evidence regarding the prior art under the first three
Graham factors.

 

PTAB Misapplied Common Sense in Finding Claims Obvious

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In Arendi S.A.R.L. v. Apple Inc., [2015-2073] (August 10, 2016) the Federal Circuit reversed the PTAB Final Written Decision that claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 of U.S. Patent No. 7,917,843 were obvious, finding that the PTAB misapplied common sense.

Petitioner argued, and the PATB agreed, that in order to avoid multiple entries of the same address, it would have been obvious that the first step in adding to an address book is to search the address book to determine if an entry already exists, and displaying any associated information that is located. Although the PTAB recognized that “a human being entering a contact into a paper address book would not be expected to search for duplicate telephone number entries,” the PTAB nevertheless, found that “it would have been obvious to the ordinary artisan to utilize a computerized search for duplicate telephone entries when entering a telephone number in an electronic address book.

The single question at issue was whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in the
prior art to arrive at the claimed invention.  The Federal Circuit said that common sense and common knowledge have their proper place in the obviousness
inquiry, at least if explained with sufficient reasoning.

In view of the Supreme Court’s instruction in KSR, consider common sense, common wisdom, and common knowledge are considered in analyzing obviousness. But the Federal Circuit noted three caveats: First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.  Second, where common sense is invoked to supply a
limitation that was admittedly missing from the prior art, the limitation in question must be unusually simple and the technology particularly straightforward.  Third, the use of “common sense”—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation
missing from the prior art references specified.

The Federal Circuit said that based on its precedent, while “common
sense” can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching.

Because the PTAB’s presumption that adding a search for phone numbers would be “common sense” was conclusory and unsupported by substantial evidence, the missing limitation is not a “peripheral” one, and there is nothing in the record to support the PTABs conclusion that supplying the missing limitation would be obvious to one of skill in the art, the Federal Circuit reversed the Board’s
finding of unpatentability.

Federal Circuit Vacates and Remands PTAB Obviousness Determination Not Supported by Adequate Reasoned Explanation

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In In re Warsaw Orthopedic, Inc., 2015-1050, 2015-1058 (August 9, 2016), the Federal Circuit affirmed in part, vacated in part, and remaned, the PTAB’s decision in IPR2013-00206 and IPR2013-00208 that claims 1–8 and 17–23 of U.S. Patent No. 8,251,997, were obvious and therefore invalid.

The Federal Circuit largely affirmed the PTAB obviosuness determination.   However, the Federal Circuit noted the PTAB has an obligation to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.  As for its reasoning, the PTAB must articulate ‘logical and rational’ reasons for its decisions.

The Federal Circuit said it could affirm the PTAB’s findings if it can reasonably discern that that the PTAB followed a proper path, even if that path is less than
perfectly clear.  However with respect to the obviousness determination of claim 17, the Federal Circuit could not reasonably discern that the PTAB’s decision.  The Federal Circuit complainted that the PTAB’s narrative
in support of its finding with respect to claim 17 consists of a single sentence, which “does not equate to the reasoned explanation needed to support its conclusion.”  Thus the Federal Circuit vacated and remanded for additional explanation.

 

PTO Cannot Raise and Decide Unpatentability Theories Never Presented by the Petitioner

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In In re Magnum Tools International, Ltd., [2015-1300] (July 25, 2016) the Federal Circuit reverse the PTAB’s determination that the challenged claims U.S. Patent No. 8,079,413 were invalid for obviousness.

The Federal Circuit examined burden of proof, which encompasses both a burden of persuasion and a burden of production.  The Federal Circuit said that In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”  Where, as here, the only question presented is whether due consideration of the four Graham factors renders a claim or claims obvious, no burden shifts from the patent challenger to the patentee.  This is especially true where the only issues to be considered are what the prior art discloses, whether there would have been a motivation to combine the prior art, and whether that combination would render the patented claims obvious.  The Federal Circuit said that the PTO’s burden shifting framework is directly at odds with its precedent holding that the decision to institute and the final written decision are “two very different analyses,” and each applies a “qualitatively different standard.”  Furthermore, because of the significant
difference between the standards of proof at institution and trial during an IPR, it is inappropriate to shift the burden to the patentee after institution to prove that the patent is patentable.

The Federal Circuit said the petitioner continues to bear the burden of
proving unpatentability after institution, and must do so by a preponderance of the evidence at trial. See 35 U.S.C. § 316(e). The Board has an obligation to assess the question anew after trial based on the totality of the record.

The patent owner argued that petitioner failed to establish a motivation to combine, pointing out that the Petition was based on a different reference than relied upon in the institution decision.  The Federal Circuit rejected the PTO’s position that this should have been challenged with a request for rehearing of the institution decision, holding that the patent owner can challenge a final Board opinion relying on the same rationale given in the institution decision.

The Federal Circuit agreed with the patent owner that the Board improperly shifted the burden to the patent owner to prove nonobviousness.  To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.

Finding that the petitioner failed to separately meet its burden of establishing obviousness, the Federal Circuit reversed.

The Federal Circuit went on to reject the USPTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR. Instead, the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.  The Federal Circuit said that while the PTO has broad authority to establish procedures for revisiting earlier-granted patents in IPRs, that authority is not so broad that it allows the PTO to raise, address, and decide unpatentability theories never presented by the petitioner and not supported by record evidence.

 

 

 

 
 
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Sometimes the Application of a New Technology is Obvious from the New Technology Itself

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In In re Cree, [2015-1365] (March 21, 2016), the Federal Circuit affirmed the decision of the PTAB in an ex parte reexamination that the claims directed to the production of white light through the “down-conversion” of blue light from LEDs was obvious from references teaching the down-conversion from other light sources including lasers.  The Board found that the claimed invention was predictable in view of the state of the art in LEDs, the market demand for white light devices, the finite number of identified means to convert light from LEDs into white light, and the advantages of using the down-conversion approach.

Among other things Cree contended that neither the Examiner nor the Board articulated any rational motivation to combine the teaches of down-conversion of laser light with high intensity LEDs.  The  Federal Circuit said that it was the availability of high-powered LEDs that provided the motivation to use such LEDs in known down-conversion production of white light.  Cree further argued that a person of ordinary skill would fail to appreciate that  teachings on down-conversion of laser light would be applicable to LEDs as well.  However the Federal Circuit found sufficient factual evidence that those of skill in the art have sufficient understanding of the scientific and engineering principles involved to have had a reason to combine the references.  Finally Cree argued that the Board’s rejection was based on “impermissible hindsight,” but the Federal Circuit found this to simply be “a repackaging” of the argument that there was insufficient evidence of a motivation to combine the references.

The Federal Circuit was also unimpressed with Cree’s showing of secondary considerations.  Cree pointed to third party press releases about the third party’s work on the same concept.  The Federal Circuit agreed that praise from a competitor tends to show non-obviousness, “self-serving statements from researchers about their own work do not have the same reliability.”   The Federal Circuit discounted evidence of licensing because it was unclear whether the licensing was due to the merits of the claimed invention or because of a desire to avoid litigation, prior business relationships, or for other economic reasons.”  Finally the Federal Circuit discounted evidence of commercial success because of a lack of showing of nexus between the invention and the success.