{"id":1603,"date":"2017-06-16T15:27:54","date_gmt":"2017-06-16T19:27:54","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1603"},"modified":"2017-06-17T16:16:46","modified_gmt":"2017-06-17T20:16:46","slug":"the-board-can-rely-on-a-partys-arguments-in-an-ipr-as-long-as-it-explains-why","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1603","title":{"rendered":"The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why"},"content":{"rendered":"

In Outdry Technologies Corp. v. Geox S.P.A.<\/a>, [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that\u00a0claims 1\u201315 of U.S.\u00a0Patent No. 6,855,171 would have been\u00a0obvious over a combination of prior art.<\/p>\n

The ‘171 patents claims methods of waterproofing\u00a0leather, particularly for the manufacture of shoes, clothes,\u00a0or leather accessories by lining the interior surface of the leather with a semipermeable membrane. \u00a0The Board found that one reference showed all of the elements of the claimed method except for the size and density of the adhesive dots, and that the other references taught the size and density of the adhesive dots.<\/p>\n

The Federal Circuit agreed with the Board’s construction of “directly pressing” as\u00a0to mean \u201capplying pressure without any intervening
\nmaterials or layers other than the recited adhesive.\u201d \u00a0The Federal Circuit also discounted the\u00a0\u201cprocess for waterproofing\u00a0leather\u201d language of the claim, because it was in the preamble and was “simply a statement of intended use, not a\u00a0separate claim limitation.”<\/p>\n

The Federal Circuit rejected the patent owner’s argument that the Board failed to provide adequate motivation to combine the references. \u00a0After reviewing cases (Rovalma, Van Os, Arendi, Cutsforth, NuVasive, and Icon Health) where the Board did fail to provide adequate motivation, the Federal Circuit found that the Boards decision\u00a0did not suffer from similar\u00a0deficiencies. \u00a0The Federal Circuit said that the Board clearly articulated Petitioner\u2019s arguments\u00a0for why a person of ordinary skill in the art would\u00a0have been motivated to modify the process of\u00a0adhering dots to create waterproof and breathable leather\u00a0with the secondary references disclosed glue patterns. \u00a0The Federal Circuit concluded that the Board engaged in reasoned\u00a0decision making and sufficiently articulated its analysis in\u00a0its opinion to permit review.<\/p>\n

The Federal Circuit found that the Board\u2019s reliance on petitioner’s arguments did not\u00a0undermine its otherwise adequate explanation for finding\u00a0a motivation to combine. The Federal Circuit noted that the Board did not reject the patent owner’s\u00a0positions without clarity as to why it found petitioner’s arguments persuasive. It did not merely incorporate petitioner’s petition by reference, leaving uncertainty as to which\u00a0positions the Board was adopting as its own. Nor was it other unclear what evidence the Board may or may not have relied
\non to find a motivation to combine. The Federal Circuit said that the Board is \u201cpermitted to credit a party\u2019s\u00a0argument as part of its reasoned explanation of its factual\u00a0findings\u201d; it simply must \u201cexplain why it accepts the\u00a0prevailing argument.\u201d<\/p>\n

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

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that\u00a0claims 1\u201315 of U.S.\u00a0Patent No. 6,855,171 would have been\u00a0obvious over a combination of prior art. The ‘171 patents claims methods of waterproofing\u00a0leather, … 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-1603","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\/1603","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=1603"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1603\/revisions"}],"predecessor-version":[{"id":1604,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1603\/revisions\/1604"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1603"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1603"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1603"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}