In In Re: Warsaw Orthopedic, Inc., the Federal Circuit reiterated that its function is not to “reweigh facts already considered by the PTAB,” but to “determine[] whether substantial evidence supports the [PTAB's] fact findings.” 832 F.3d 1327, 1333 (Fed. Cir. Aug. 9, 2016). The Court found that some, but not all, of the Board’s factual findings were supported by substantial evidence.

On one hand, the Court found that the Board sufficiently explained its conclusion that a person of ordinary skill would have been motivated to combine the prior art references to achieve the claimed invention, which was generally directed to inserting an implant between two vertebrae of the spine. Id. at 1330 (describing U.S. Patent No. 8,251,997 (“the ‘997 patent”)). The Court refused to “reweigh” those facts already considered by the PTAB, stating that Patentee’s arguments “true nature . . .  reflect[ed] a collateral attack on the teachings of the prior art references, based on aspects of the references that it [found] more persuasive than did the PTAB.” Id. at 1334.

On the other hand, the Court determined that one of the Board’s factual findings regarding a prior art reference was not supported by substantial evidence when the Board only provided a “single sentence . . . conclusory assertion” that the reference “appear[ed] to” disclose a limitation. Id. at 1335. The Court explained that the Board has an “independent obligation” to “articulate ‘logical and rational’ reasons for [its] decisions,” and that this standard is met if it can “reasonably discern that [the Board] followed a proper path, even if that path is less than perfectly clear.” Id. at 1335, quoting Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015). Here, in light of the Board’s “conclusory assertion,” the Court was unable to discern whether the Board’s path was proper. Id.

Accordingly, the court affirmed-in-part, vacated-in-part, and remanded the Board’s decision for additional explanation. Id.

In light of Warsaw, Patent owners seeking to challenge an adverse ruling from the PTAB should gear their appeal arguments toward whether or not the Board’s factual findings are supported by substantial evidence and challenging a finding predicated upon terse or tepid statements. On the other hand, successful petitioners on appeal would do well to characterize patent owner’s arguments as ones already raised but found unpersuasive by the Board, and as an invitation to the Federal Circuit to reweigh evidence already considered by the Board. 

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