You’re So Vague: Federal Circuit Sends IPR Decision Back to PTAB for More Thorough Analysis
In a precedential decision, the Federal Circuit reaffirmed that the Patent Trial and Appeal’s Board (PTAB) is required to explicitly state motivations to combine prior-art references in claim rejections for obviousness. Rejections that rely on mere statements that a person of ordinary skill in the art reading the prior-art references would understand that the combination would have allowed for claimed features is not enough.
In Apple v. Personal Web Technologies, LLC, Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), Apple successfully petitioned for Inter Partes Review (IPR) of six claims of Personal Web’s Patent No. 7,802,310 (the ’310 patent). The ’310 patent claims methods of locating data and controlling access to data by giving a data file a substantially unique name that depends on the relevant file’s content.
Apple argued claims 24, 32, 70, 81, 82, and 86 were unpatentable under 35 U.S.C. § 103 in view of two prior- art references (U.S. Patent No. 5,649,196 to Woodhill and U.S. Patent No. 7,359,881 to Stefik). The PTAB agreed, and ruled that the Woodhill and Stefik features could be combined to provide the access control claimed by PersonalWeb.
On appeal, the Federal Circuit affirmed the PTAB’s claim construction, but vacated the Board’s obviousness determination as “inadequate.” The Court found that the Board did not sufficiently explain and support its findings that the prior art (1) disclosed all elements of the challenged claims and(2) that a relevant skilled artisan would have had a motivation to combine the prior art references to produce the claimed ’310 invention with a reasonable expectation of success.
The Federal Circuit explained that, to “allow effective judicial review, . . . the Board is obligated to ‘provide an administrative record showing the evidence on which the findings are based, accompanies by the agency’s reasoning in reaching its conclusions.’” Id. at 8–9. Thus, for a sustainable obviousness determination, the Board had to make findings, supported by evidence and explanation, on two points:
First, the Board had to find in [the prior art references] all of the elements of the ’310 patent claims at issue. [. . .]
Second, the Board had to find that a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed by the ’310 patent claims at issue and had a reasonable expectation of success in doing so.
Apple, Case No. 2016-1174 at 7–8.
In this case, the Court found the Board failed to provide this explanation and support because the Board’s Decision was conclusory; “the Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work.” Id. at 12.
The Court instructed that “the amount of explanation needed will vary from case to case, depending on the complexity of the matter and the issues raised in the record.” Id. at 8. For example, a brief explanation may be sufficient if “the technology is simple and familiar and the prior art is clear in its language and easily understood.” Id. at 12.
But where the technology or prior-art is complex or obscure, as in this case, “a clear, evidence-supported account of the contemplated workings of the combination” is a “prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Id.
The Federal Circuit vacated the PTAB’s Final Written Decision and remanded for the Board to reconsider the merits of the obviousness challenge.
The Federal Circuit does not often reverse or vacate PTAB decisions. However, this decision is one of a series of similar cases in which the Federal Circuit has demonstrated an increasing willingness to send decisions back to the Board for a more detailed analysis. We’re starting to think this song is about you, PTAB. Don’t you? Don’t you?