United States: Recent Development At The Federal Circuit: Remanding The PTAB's Obviousness Determinations

As post-grant patent challenges under the AIA have become more popular, the Federal Circuit's docket has changed dramatically. As of February 1, 2013, the Federal Circuit had 1,001 pending cases, of which only 92 originated from the USPTO. By contrast, as of January 31, 2017, 1,511 cases were pending in the court, with 609 of them coming from the USPTO. The bulk of this difference comprises appeals from post-grant AIA trials.

Post-grant challenges are limited to validity issues, and the most popular of these challenges—inter partes review ("IPR")— is limited to anticipation and obviousness challenges based on "paper" prior art. Therefore, the Federal Circuit's increased workload has a specific focus on validity issues, especially obviousness over prior art references. This focus has resulted in precedential opinions regarding the requirement that there be evidence of some reason that a skilled artisan would have combined the prior art.

In December, the Federal Circuit decided In re NuVasive, Inc.,¹ an appeal from an IPR in which the PTAB held the challenged claims obvious. Vacating the PTAB's decision, the Federal Circuit both discussed the requirement that "the PTAB must articulate a reason why a PHOSITA would combine the prior art references" and "identified some insufficient articulations of motivations to combine" in the PTAB's recent decisions: conclusory statements, mere rejection of contrary arguments, and reliance solely on common knowledge.² In the NuVasive IPR, the PTAB had relied on all three articulations in ruling that an ordinary artisan would have been motivated to combine the cited references.³

Then, in January, the Federal Circuit decided In re Van Os,⁴ an appeal from a PTAB decision in original prosecution. There, the PTAB "found, without further discussion, that the combination of Gillespie with Hawkins would have been 'intuitive.'"⁵ "The board did not explain why modifying Hawkins with the specific disclosure in Gillespie would have been 'intuitive' or otherwise identify a motivation to combine."⁶ Based solely on the insufficiency of this explanation, and without any criticism of the PTAB's ultimate conclusion, the Federal Circuit vacated the decision and remanded.⁷ Judge Newman dissented in part, agreeing that the PTAB failed to explain its obviousness case but opining that reversal, not remand, was the appropriate remedy.⁸

Most recently, the Federal Circuit decided Personal Web Techs., LLC v. Apple, Inc.,⁹ an appeal from an IPR in which the PTAB found the claims obvious. The Federal Circuit found that the PTAB's analysis was lacking with respect to both the prior art's disclosure of the claim elements and the rationale underlying the combination of references. On the latter point, the Federal Circuit went into greater substantive detail than in NuVasive and Van Os, holding that it is simply not enough "that a skilled artisan, once presented with the two references, would have understood that they could be combined."¹⁰ The court further criticized the PTAB's failure to explain "how the combination of the two references was supposed to work."¹¹ The Federal Circuit remanded, without any determination as to whether the record could actually support the PTAB's conclusion.¹²

Remanding a decision so that the PTAB can provide a more detailed explanation on the same record can introduce significant delay into the process, particularly if another appeal is taken thereafter. This is a particular problem in the context of AIA trials, which are supposed to conclude quickly and which often are the basis for stay of parallel district court litigation. But the Federal Circuit's hands are to some extent tied: A court cannot affirm agency action on grounds not relied upon by the agency when doing so would require, e.g., fact finding on appeal.¹³ Judge Newman would reverse in the context of ex parte examination, in which the PTO and the applicant are the only parties to the appeal and the PTO can be charged with the PTAB's failure to explain its rationale. However, it appears that the court finds this approach unfair in the context of inter partes proceedings—in which the challenger should not be held responsible for the PTAB's explanation of its findings—or unwarranted by the relatively weak (although cursorily invalidated) patent claims.

Footnotes

1 842 F.3d 1376 (Fed. Cir. 2016). The petitioner in the IPR (Medtronic, Inc.) withdrew from the appeal, hence the ex parte caption.

2 Id. at 1382–83 (emphasis in original). "PHOSITA" means a person having ordinary skill in the relevant art.

3 Id. at 1384.

4 844 F.3d 1359 (Fed. Cir. 2017).

5 Id. at 1361.

6 Id. at 1362 (emphasis added).

7 See id. at 1361–62.

8 Id. at 1362–63 (Newman, J., dissenting).

9 No. 2016-1174 (Fed. Cir. Feb. 14, 2017) (slip op.) (precedential).

10 Id. at 11 (emphasis in original).

11 Id. at 12 (emphasis in original).

12 Id. at 12–13.

13 SEC v. Chenery Corp., 318 U.S. 80, 88 (1943).

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