{"id":1552,"date":"2017-05-11T12:49:00","date_gmt":"2017-05-11T16:49:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1552"},"modified":"2017-05-21T12:49:14","modified_gmt":"2017-05-21T16:49:14","slug":"not-necessarily-unfair-to-reply-on-patent-owners-submissions-in-obviousness-finding-but-board-failed-to-provide-adequate-explanation","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1552","title":{"rendered":"Not Necessarily Unfair to Reply on Patent Owner’s Submissions in Obviousness Finding, but Board Failed to Provide Adequate Explanation"},"content":{"rendered":"

In Rovolma, S.A. v. Bohler-Edelstahl GmbH & Co., KG<\/em>,<\/a> [2016-2233] (May 11, 2017), the Federal Circuit vacated the Board’s Final Written Decision in IPR2015-00150, finding the Board did not set\u00a0forth its reasoning in sufficient detail to determine\u00a0whether the Board\u2019s decision\u00a0was substantively supported and procedurally proper, and remanded the case.<\/p>\n

Bohler petitioned for\u00a0inter partes review of\u00a0all four claims of U.S. Patent No. 8,557,056, arguing that the claims\u00a0should be construed to cover the specific chemical compositions\u00a0described in the specification, regardless of whether they were created according to the recited process steps. \u00a0Rovalma successfully argued that the claims should be construed to require the process steps, but the Board then used Rovalma’s evidence of enablement to find the claims obvious.<\/p>\n

The Fedeal Circuit noted the importance of\u00a0clarity with respect to obviousness determinations, and noted that it has\u00a0repeatedly
\ninsisted on explanations in reviewing the adequacy\u00a0of the Board\u2019s analysis\u2014both as a matter of obviousness\u00a0law and as a matter of administrative law. \u00a0However, the Federal Circuit found that the Board did not sufficiently lay out the basis for its\u00a0implicit findings regarding serveral of the process limitations in the claims, noting that the Board simply found that these\u00a0steps would have been obvious\u00a0in view of Rovalma\u2019s submissions, with no explanation of\u00a0the evidentiary basis for those determinations. \u00a0The Federal Circuit noted that petitioner did not provide any explanation regarding the\u00a0process claim elements that the Board could adopt as its\u00a0own. \u00a0The Federal Circuit also found that the Board did not adequately explain what would motivate a person of ordinary skill to make the modifications. \u00a0Finally, the Federal Circuit found that Board did not adequately explain why a person\u00a0of ordinary skill in the art would have reasonably expected\u00a0success.<\/p>\n

The Federal Circuit rejected Rovalma’s argument that the Board was precluded from relying on a patent owner’s submissions\u00a0in determining that the\u00a0claims, as construed by Patent Owner, would have been obvious over the Petitioner-asserted prior art. \u00a0The Federal Circuit said that this took the rule of\u00a0Magnum Oil Tools too far. \u00a0Magnum Oil Tools rejected the\u00a0PTO\u2019s position that the Board is free to adopt arguments\u00a0on behalf of petitioners that could have been, but\u00a0were not, raised by the petitioner during an IPR, and simply required the Board to base its decision on
\narguments that were advanced by a party, and to which\u00a0the opposing party was given a chance to respond.\u201d \u00a0This does not preclude the Board from using submissions of the Patent Owner to support invalidity arguments of which Patent Owner adequate notice and opportunity to be heard.<\/p>\n

The Federal Circuit suggested that a Petitioner may commit forfeiture when it receives notice of the Patent Owner’s claim construction (in the Patent Owners’ response) and chooses not to present a case\u00a0for unpatentability under that construction when it had\u00a0the opportunity, in its Reply.<\/p>\n

As to Rovalma’s challenge that it was not given notice and an opportunity to respond, the Federal Circuit\u00a0said that because it could not sufficiently determine which inferences\u00a0the Board drew from Rovalma\u2019s submissions, it would\u00a0not decide whether the Board violated Rovalma\u2019s\u00a0procedural rights. The Federal Circuit said that to make that decision, it would need
\nto be able to determine what evidence the Board relied on\u00a0to support its implicit factual findings, how the Board\u00a0interpreted that evidence, and what inferences the Board\u00a0drew from it.<\/p>\n

 <\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Rovolma, S.A. v. Bohler-Edelstahl GmbH & Co., KG, [2016-2233] (May 11, 2017), the Federal Circuit vacated the Board’s Final Written Decision in IPR2015-00150, finding the Board did not set\u00a0forth its reasoning in sufficient detail to determine\u00a0whether the Board\u2019s decision\u00a0was … 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-1552","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\/1552","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=1552"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1552\/revisions"}],"predecessor-version":[{"id":1553,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1552\/revisions\/1553"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1552"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1552"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1552"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}