{"id":1422,"date":"2017-02-14T19:17:16","date_gmt":"2017-02-15T00:17:16","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1422"},"modified":"2017-02-15T15:13:15","modified_gmt":"2017-02-15T20:13:15","slug":"just-because-one-could-doesnt-mean-one-would","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1422","title":{"rendered":"Just Because One Could Doesn’t Mean One Would"},"content":{"rendered":"

In Personal Web Technologies, LLC v. Apple, Inc.<\/em>, [2016-1174] (February 14, 2017), the Federal Circuit\u00a0affirmed the Board\u2019s\u00a0claim construction, but vacated the Board\u2019s obviousness\u00a0determination because the\u00a0Board did not adequately support its findings that the\u00a0prior art disclosed all elements of the challenged claims\u00a0and that a relevant skilled artisan would have had a\u00a0motivation to combine the prior-art references to produce\u00a0the claimed inventions.<\/p>\n

The Federal Circuit said that in the obviousness theory presented by Apple and\u00a0adopted by the Board, the Board had to make findings,\u00a0supported by evidence and explanation, on two points. \u00a0First, the Board had to find all of\u00a0the elements of the \u2019310 patent claims at issue. \u00a0Second, the Board had to find that a person\u00a0of ordinary skill in the art would have been motivated to\u00a0combine the prior art in the way claimed by the \u2019310\u00a0patent.<\/p>\n

The Federal Circuit noted that in KSR the Supreme Court said \u201cit can be important to identify a reason\u00a0that would have prompted a person of ordinary skill in\u00a0the relevant field to combine the elements in the way the\u00a0claimed new invention does\u201d and added that\u00a0\u201c[t]o facilitate review,\u00a0this analysis should be made explicit.\u201d<\/p>\n

The Federal Circuit said that\u00a0in order to allow effective judicial review, the agency\u00a0is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied\u00a0by the agency\u2019s reasoning in reaching its conclusions. \u00a0The Federal Circuit concluded that the Board\u2019s decision was inadequate; it found that the Board\u00a0did not sufficiently explain and support the conclusions\u00a0that (1) the references disclose all of the elements\u00a0recited in the challenged claims and (2)\u00a0a relevant skilled artisan would have been motivated to\u00a0combine the art in the way the \u2019310 patent\u00a0claims and reasonably expected success.<\/p>\n

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. \u00a0The Federal Circuit further noted that the Board’s analysis did not address motivation. \u00a0The Federal Circuit found that the Board’s\u00a0reasoning\u00a0seems to say no more than that a skilled artisan, once\u00a0presented with the two references, would have understood\u00a0that they could be combined. The Federal Circuit said that is not enough: it\u00a0does not imply a motivation to pick out those references\u00a0and combine them to arrive at the claimed invention.<\/p>\n

The Federal Circuit said that the Board\u2019s reasoning does not meet
\nthe requirements for a sustainable obviousness determination
\nin this case. \u00a0The Federal Circuit explained that the remand is not merely for explanation or clarification of what the\u00a0Board meant in the decision; the\u00a0remand is for the Board to reconsider the merits of the obviousness challenge.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Personal Web Technologies, LLC v. Apple, Inc., [2016-1174] (February 14, 2017), the Federal Circuit\u00a0affirmed the Board\u2019s\u00a0claim construction, but vacated the Board\u2019s obviousness\u00a0determination because the\u00a0Board did not adequately support its findings that the\u00a0prior art disclosed all elements of the challenged … 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-1422","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\/1422","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=1422"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1422\/revisions"}],"predecessor-version":[{"id":1425,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1422\/revisions\/1425"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1422"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1422"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1422"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}