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
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?
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27 Apr 2017, Business Breakfast, Costa Mesa, United States
Please join us for Sheppard Mullin's Breakfast With Your Labor Lawyer Seminar Series. This year, you will have to face many new developments in California labor and employment laws that will significantly affect the way you run your day-to-day business operations.
Cuatrecasas and RBB Economics, in collaboration with the CNMC and Universidad Carlos III de Madrid, are organising the Third Seminar on International Developments in Private Competition Litigation, which will take place on 27 April 2017 in the Conference Hall of the CNMC.
Sheppard Mullin Antitrust & Competition Group Co-Chair Mike Scarborough will be speaking on the defendants’ perspective of managing the legal risks of international cartels in the “How Do Companies Resolve Worldwide Claims – What are the Risks and Opportunities” session.
Enjoy drinks, hors d'oeuvres, and the works of prominent female artists in one of Washington's historic landmarks, former residence of President James Monroe and current home to the Arts Club of Washington.
The evening will feature a conversation with artist Amy Flatten, whose works will be on display and can be seen here, as well as mingling with a wonderful network of professional women.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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