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May 26, 2017Newsletter

This Week at the Board - May 26, 2017

Federal Circuit Finds That Board Did Not Provide Adequate Explanation for Its Findings

In Fed. Cir. 2016-2233, the Patent Owner challenged the Board’s implicit factual findings that a person of ordinary skill (1) would have appreciated that the claimed thermal conductivities could be achieved by practicing the claimed process steps, (2) would have been motivated to increase the thermal conductivities of the steels disclosed in the prior art to achieve the claimed thermal conductivities, and (3) would have had a reasonable expectation of success in achieving the claimed thermal conductivities. The Federal Circuit concluded that the Board did not sufficiently explain the basis for its obviousness determinations to permit the Federal Circuit to resolve the substantial-evidence issues raised by the Patent Owner. In particular, while the prior art noted a desirability for high thermal conductivities, the Federal Circuit cautioned that “it does not necessarily follow from prior-art disclosures of the general desirability of high thermal conductivities that a person of ordinary skill would have been motivated to increase thermal conductivities beyond levels previously achieved.” The Federal Circuit found that the Board did not provide an explanation as to why one of skill in the art would have been motivated to increase thermal conductivities as required by the claims, and why one of skill in the art would have reasonably expected success in achieving the claimed thermal conductivities.

A link to the Federal Circuit Decision is provided here.

Motion to Reconsider Granted Due to Oversight of Petitioner’s Ground for Invalidity

In IPR2016-01491, the Board granted a motion to reconsider, acknowledging that the Board had overlooked Petitioner’s alternative reliance on a prior art reference. In the Petition, the Petitioner had asserted that the prior art reference, Sandrew, in combination with another prior art reference, Yuille, disclosed or suggested the claim at issue. The Petition, however, also noted that like Sandrew, “Yuille also discloses the remaining step of the 941 Patent (i.e., copying).” The Board found that this language supported a ground of invalidity based on Sandrew alone. The Board noted that “[w]hile Petitioner’s obviousness challenge could have been more clearly presented, we nonetheless overlooked Petitioner’s alternative reliance on Sandrew alone…”

A link to the PTAB’s Decision is provided here.

Board Institutes IPR Despite Prior Art Having Previously Been Before the Examiner

In IPR2017-00135, the Board considered whether to institute an IPR despite the fact that two prior art references relied upon by the Petitioner were already cited and considered by the Examiner during the underlying examination. The Petitioner asserted that a different embodiment of one of the references was being relied upon in the IPR as compared to the underlying examination, and that therefore the prior art was not the same prior art under §325(d). The Board noted that even if a different embodiment were being relied upon, §325(d) addresses the same “prior art” and not specific embodiments as argued by the Petitioner. The Board further noted that although the same prior art was before the Office, substantially the same arguments were not. Specifically, one of the two references was not relied upon during prosecution to reject claim 1 in the underlying examination, but was being relied upon to reject claim 1 in the IPR. Thus, a new argument was at issue for claim 1, and for this reason, the Board agreed to institute for claim 1.         

A link to the PTAB’s Decision is provided here.

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