Explain Yourself: “Untethered” Obviousness Determination Reversed
The US Court of Appeals for the Federal Circuit vacated in part and remanded a Patent Trial and Appeal Board (Board) determination of unpatentability because the Board did not adequately support its reasoning as to certain claims. Alacritech, Inc. v. Intel Corp., Case No. 19-1467 (Fed. Cir. July 31, 2020) (Stoll, J.).
Intel petitioned for inter parties review (IPR) of a patent owned by Alacritech that is directed to performing network processes on a dedicated network card (INIC) instead of on a computer’s central processing unit (CPU). Intel asserted that the claims would have been obvious over prior art Thia in view of Tanenbaum. The Board agreed, finding claims of the patent were obvious. Alacritech appealed.
Addressing the standard of review as set forth in the Administrative Procedure Act, the Federal Circuit explained that the Board is obligated to provide a record which shows the evidence on which its findings are based, as well as its reasoning in reaching its conclusions. While “perfect explanations” are not required, it must be sufficient for the Court to see that the agency has “done its job.” The Court found that the Board’s analysis as to three claims in the patent did not meet this standard.
The Court explained that the Board, after only briefly reciting the parties’ arguments, “merely concluded” that the relevant claim limitation was present in the subject claims and the prior art, and in so doing “misapprehend[ed] both the scope of the claims and the parties’ arguments.” The Court went on to explain that the crux of the dispute was where the claim limitation at issue took place—in the CPU (as in the prior art), or in the INIC (as required by the claims). The Court found that the Board’s analysis did not acknowledge this aspect of the parties’ dispute or explain how the prior art taught such a limitation. Without an explanation of its reasoning, the Court could not reasonably discern whether the Board followed the proper path in making its determination.
Intel argued that, while the Board did not itself expound on its reasoning, it did sufficiently support its position by citation to and adoption of Intel’s arguments. While the Federal Circuit noted that it has upheld Board determinations that flowed from the rejection or adoption of a party’s arguments, in this case the Board’s decision was “untethered from either party’s position.” Specifically, both parties focused their arguments on the Thia reference, while the Board relied on Tanenbaum to support its findings. Thus the Court was unable to infer the Board’s argument from those founded on a different basis.
The Federal Circuit also rejected as “fundamentally incorrect” Intel’s assertion that any evidentiary support in the record—even if not cited to by the Board—is sufficient to support the Board’s determination. The Court retorted that Intel’s sole citation to a footnote in a 2002 case was at odds with the clear precedent confining the Court’s review to the actual grounds on which the Board relied. Accordingly, the Court vacated the Board’s obviousness determination and remanded for further proceedings.