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Federal Circuit to PTAB: No Short Cuts Allowed

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.

Securus Techs., Inc. v. Global Tel*Link Corp. (Appeal Nos. 2016-1992 and -1993) involved the appeal of two inter partes review (“IPR”) proceedings initiated by Global Tel*Link Corp. against Securus Technologies, Inc.’s U.S. Patent No. 7,860,222 (the “’222 Patent”).  The Board issued a Final Written Decision in both IPRs, finding all claims of the ’222 Patent unpatentable as obvious over the cited prior art references.  In finding some of the dependent claims to be obvious, the Board provided only a generic sentence:  “After consideration of the language recited in the [the claims], the Petition, the Patent Owner Response, and the Petitioner’s Reply, as well as the relevant evidence discussed in those papers, we find that one of ordinary skill in the art [“POSITA”] would have considered these dependent claims obvious over [the asserted art].”  Slip Op. at 5-6.

On appeal, Securus argued, among other things, that the Board failed to articulate any reason supporting its decision that certain dependent claims were unpatentable.  The Federal Circuit agreed.

The Court first reiterated that the Board must “make the necessary findings and have an adequate evidentiary basis for its findings” and “examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.”  Slip Op. at 13-14 (internal citations omitted).  While perfect explanations are not required, “it is not adequate to summarize and reject arguments without explaining why the [Board] accepts the prevailing argument.”  Id. at 14.  That is, the “Board must provide some reasoned basis for finding the claims obvious in order to permit meaningful review by this court.”  Id.  As such, the Federal Circuit held that the Board’s failure to provide any reasoning for its decision that certain dependent claims were unpatentable was insufficient and, therefore, remanded the case for further proceedings.

This case highlights the importance of the Board to adequately explain its findings.  Practitioners should take extra care in reviewing decisions by the Board in post-grant review proceedings to ensure all of the Board’s findings are adequately explained, as a failure by the Board to provide adequate explanations could create an issue ripe for appeal.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VII, Number 115


About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.