{"id":1332,"date":"2016-12-07T19:21:58","date_gmt":"2016-12-08T00:21:58","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1332"},"modified":"2016-12-07T19:21:58","modified_gmt":"2016-12-08T00:21:58","slug":"if-the-ptab-doesnt-say-why-the-invention-is-obvious-the-federal-circuit-has-nothing-to-affirm","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1332","title":{"rendered":"If the PTAB Doesn’t Say Why the Invention is Obvious, the Federal Circuit Has Nothing to Affirm"},"content":{"rendered":"

In re Nuvasive, Inc.<\/em>, [2015-1670] (December 7, 2016), the Federal Circuit vacated and remanded the PTAB Decision finding claims of\u00a0U.S.\u00a0Patent No. 8,361,156 invalid for obviousness. \u00a0The 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.<\/p>\n

The Federal Circuit said that in\u00a0assessing the prior art, the PTAB \u201cconsider[s]
\nwhether a PHOSITA would have been motivated to\u00a0combine the prior art to achieve the claimed invention.\u201d \u00a0The Federal Circuit said that\u00a0the factual inquiry whether to combine references must be “thorough and searching,\u201d and that the need for specificity pervades its authority on the PTAB\u2019s\u00a0findings on motivation to combine.<\/p>\n

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. \u00a0The Federal Circuit agreed, noting:<\/p>\n

Two distinct yet related principles are relevant to our\u00a0review. First, the PTAB must make the necessary findings\u00a0and have an adequate \u201cevidentiary basis for its
\nfindings.\u201d \u00a0. . . Second, the PTAB\u00a0\u201cmust examine the relevant data and articulate a satisfactory\u00a0explanation for its action including a rational \u00a0connection between the facts found and the choice made.\u201d \u00a0The Federal Circuit said that the PTAB must provide \u201ca reasoned basis for the\u00a0agency\u2019s action,\u201d and it\u00a0will uphold a decision of less\u00a0than ideal clarity if the agency\u2019s path may reasonably be\u00a0discerned.<\/p>\n

The Federal Circuit identified several instances with insufficient articulations of motivation: First,\u00a0conclusory\u00a0statements alone are insufficient; instead the finding must\u00a0be supported by a \u201creasoned explanation.\u201d Second, it is not adequate to
\nsummarize and reject arguments without explaining why\u00a0the PTAB accepts the prevailing argument. \u00a0Third although reliance\u00a0on common sense may be appropriate in some circumstances,\u00a0the PTAB cannot rely solely on\u00a0common knowledge or common sense to support its findings.<\/p>\n

Turning to the decision before it, the Federal Circuit said that the PTAB failed to explain the reason why a PHOSITA would have been \u00a0motivated to modify the prior art. \u00a0While the PTAB rejected Nuvasive’s arguments that the invention was not obvious, the\u00a0PTAB never actually made an explanation-supported\u00a0finding that the evidence affirmatively proved that the\u00a0PHOSITA would modify the prior art as proposed by petitioner.<\/p>\n

Because\u00a0it could not\u00a0reasonably discern the PTAB\u2019s reasoning as to motivation
\nto combine, judicial review cannot meaningfully be achieved, so the Federal Circuit
\nvacated and the case remanded for additional PTAB\u00a0findings and explanations regarding the PHOSITA\u2019s\u00a0motivation to combine the prior art references.<\/p>\n","protected":false},"excerpt":{"rendered":"

In re Nuvasive, Inc., [2015-1670] (December 7, 2016), the Federal Circuit vacated and remanded the PTAB Decision finding claims of\u00a0U.S.\u00a0Patent No. 8,361,156 invalid for obviousness. \u00a0The Federal Circuit found that Nuvasive waived its argument that asserted references weren’t sufficiently public … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26,12],"tags":[],"class_list":["post-1332","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1332","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1332"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1332\/revisions"}],"predecessor-version":[{"id":1333,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1332\/revisions\/1333"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1332"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1332"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1332"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}