{"id":1954,"date":"2018-02-09T21:32:26","date_gmt":"2018-02-10T02:32:26","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1954"},"modified":"2018-02-11T22:52:15","modified_gmt":"2018-02-12T03:52:15","slug":"boards-obvious-analysis-improperly-relied-upon-hindsight","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1954","title":{"rendered":"Board’s Obvious Analysis Improperly Relied Upon Hindsight"},"content":{"rendered":"

In Polaris Industries, Inc. v, Arctic Cat, Inc.<\/a>, [2016-1807, 2016-2280] (February 9, 2018), the Federal Circuit affirmed in part, vacated in\u00a0part, and remanded the PTAB’s determination in an IPR that claims of U.S. Patent No.\u00a08,596,405 were invalid, and affirmed the PTAB’s determination is a separate IPR that the claims of the same patent were not invalid.<\/p>\n

After being sued for infringing claims of the \u2019405 patent,\u00a0Arctic Cat filed two petitions for\u00a0inter partes review, challenging the patentability of claims\u00a01\u201338 as obvious in view of combinations of certain prior
\nart references, including Denney, Furuhashi, and Hickey.\u00a0 In one petition, Arctic Cat argued that all relevant claims\u00a0were obvious in view of the combination of Denney and\u00a0Furuhashi, and in the other that all of the claims\u00a0were obvious in view of Hickey and at least one\u00a0other reference.<\/p>\n

Polaris attacked the invalidation of the claims on three grounds: First, that the Board\u2019s obvious analysis was predicated on an improper claim
\nconstruction or was too cursory. Second, that\u00a0the Board relied on impermissible hindsight in combining the prior art, failing to articulate a valid motivation\u00a0to combine these references and applying a \u201csubjective preferences\u201d analysis that finds no basis in this\u00a0court\u2019s precedents. Third, it contends that the Board\u00a0erred in rejecting the undisputed evidence that Polaris\u00a0introduced regarding the commercial success.<\/p>\n

On the first grounds, the Federal Circuit rejected Polaris’ claim construction, noting that claims are given their broadest reasonable interpretation, and finding Polaris’ construction too restrictive.\u00a0 Regarding Polaris’ argument about the cursory nature of the Board’s analysis, the Federal Circuit noted that\u00a0although the Board\u2019s\u00a0reasoning could have been more thorough, it did not find fault in the Board\u2019s arguably limited treatment of Polaris\u2019s\u00a0arguments where the Board\u2019s treatment \u201cwas at least\u00a0commensurate with Polaris\u2019s presentation of this issue.<\/p>\n

On the issue of hindsight, the Federal Circuit agreed with Polaris, the Board failed to analyze whether\u00a0the prior art taught away from the claim limitations.\u00a0\u00a0The Federal Circuit noted that the Board said that \u201cone of ordinary\u00a0skill has the ability to weigh the various benefits\u00a0 and disadvantages based on subjective preferences in an\u00a0analysis largely unrelated to obviousness,\u201d and said\u00a0that it has never articulated a framework for analyzing\u00a0whether claims would have been obvious that includes the\u00a0phrase \u201csubjective preference\u201d or that permits a tribunal
\nto wholly disregard the significance of prior art teachings\u00a0based on such a characterization.\u00a0 The Federal Circuit identified three problems with the Board’s “subjective preference” analysis:\u00a0First, by completely disregarding certain teachings as ill defined\u00a0\u201csubjective preferences,\u201d the Board\u2019s approach\u00a0invited the \u201cdistortion caused by hindsight bias\u201d into the\u00a0fold.\u00a0 The Federal Circuit also noted that\u00a0the Board improperly focused on what a skilled artisan\u00a0would have been able to do, rather than what a skilled\u00a0artisan would have been motivated to do at the time of the
\ninvention.\u00a0 Finally,\u00a0the Federal Circuit found that the Board\u2019s analysis encourages the fact-finder\u00a0to outright discard evidence relevant both to \u201cteaching\u00a0away\u201d and to whether skilled artisans would have been
\nmotivated to combine references.<\/p>\n

Finally, the Federal Circuit agreed that the Board erred when it declined to accord substantive\u00a0weight to the Polaris’ undisputed evidence that its\u00a0product is the invention disclosed in certain claims because\u00a0it characterized the Polaris’ evidence as \u201cconclusory,\u201d noting that Artic Cat presented no contrary evidence.\u00a0 The Federal Circuit said that the\u00a0Board\u00a0must assess the import of this evidence after presuming
\nthat a nexus between the claims and the commercial\u00a0success exists, unless and until that\u00a0presumption is adequately rebutted.<\/p>\n

 <\/p>\n

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

In Polaris Industries, Inc. v, Arctic Cat, Inc., [2016-1807, 2016-2280] (February 9, 2018), the Federal Circuit affirmed in part, vacated in\u00a0part, and remanded the PTAB’s determination in an IPR that claims of U.S. Patent No.\u00a08,596,405 were invalid, and affirmed the … 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":[53,12],"tags":[],"class_list":["post-1954","post","type-post","status-publish","format-standard","hentry","category-objective-indicia","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1954","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=1954"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1954\/revisions"}],"predecessor-version":[{"id":1955,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1954\/revisions\/1955"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1954"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1954"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1954"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}