Fairness in Evaluation: Federal Circuit Remand to Board For Failure to Fully Consider Petitioner’s Arguments Against Motion to Amend

02 August 2017 PTAB Trial Insights Blog
Authors: George C. Beck

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims challenged in IPR2015-00208. During the IPR, Patent Owner Tire Hanger conceded that the original claims were unpatentable and filed a motion to add “human involvement to steps that an apparatus or other structure could have otherwise performed,” to the claimed method to “temporarily maintain a vehicle wheel during removal and reinstallation.” Id. at 3-5. With its motion, Tire Hanger presented arguments that its newly substituted claims were patentable over the prior art upon which the Board had instituted trial and newly identified prior art references. Id. at 5.  Petitioner Shinn Fu opposed the motion, arguing that the substitute clams were obvious over the references identified by Tire Hanger, and two additional references: U.S. Patent No. 4,796,336 (“Curran”) and U.S. Patent No. 4.650,114 (“Conrad”). Id. at 5. 

The Board ultimately found Tire Hanger’s substitute claims valid in its Final Written Decision. Id. In doing so, the Board did not reference a combination set forth by Shinn Fu in its opposition involving both the Curran and Conrad references. Id. at 5-6. The Federal Circuit concluded that “the Board erred by simply ignoring the manner in which Shinn Fu proposed its obviousness combinations in opposition to Tire Hanger’s motion to amend. [] Under our standard of review, the Board’s failure here was arbitrary and capricious.” Id. at 6.  The Federal Circuit noted that Shinn Fu had approached the prior art from an “additive” perspective, where the prior art was modified by adding features. Id. at 7. In contrast, the Board’s evaluation involved removing elements from the prior art to achieve a resulting combination, and thereafter finding no motivation to combine the underlying references. Id. at 7.

The Federal Circuit stated that “[b]ecause the Board did not provide any analysis with regard to the manner in which Shin Fu proposed its key obviousness combination, we have no meaningful way to review the Board’s patentability determination in light of Shinn Fu’s arguments.” Id. at 9. The court emphasized that the error “[did] not stem from [the] disregard for the teachings of any particular reference,” and that “the law does not require that the Board address every conceivable combination of prior art discussed through an IPR proceeding.” Id. Nevertheless, the Federal Circuit held that “[t]he Board does have an obligation, however, to address the arguments that the parties present to it—here, represented by the manner in which Shinn Fu argued the Curran-Conrad combination.” Id.

The Shinn Fu opinion and other Federal Circuit decisions reflect the view that post-grant proceedings should provide a certain level of due process to both petitioners and patent owners.  For example, in Rolvama, S.A. v. Bohler-Edelstahl GMBH & Co. KG, the Federal Circuit recently reversed and remanded a Board decision based on in part on the Board’s failure to give the patent owner an opportunity to be heard regarding use of its own submissions to support unpatentability. Slip. Op. 2016-2233 (May 11, 2017). Similarly, in Veritas Technologies LLC v. Veeam Software Corp., the Federal Circuit reversed and remanded the Board’s denial of a contingent motion to add substitute claims, finding the Board’s reasoning unreasonable when evaluating the Patent Owner’s explanation that the new features were not in the prior art. 835 F. 3d 1406 (Fed. Cir. 2016). Likewise, in In Re: Nuvasive, Inc., the Federal Circuit reversed and remanded based on the Board’s failure to articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references, resulting in a situation where the Federal Circuit could not “‘reasonably discern’ the PTAB’s reasoning as to motivation to combine,” and thus “judicial review [could not] ‘meaningfully [be] achieved.’” 842 F.3d 1376 (Fed. Cir. 2016).

These decisions reflect a concern that parties be afforded basic due process by having arguments considered by the Board, at least to a degree that permits meaningful judicial review. While the Board does not have to consider every potential combination of prior art in detail, it has to provide at least some analysis supporting decisions addressing arguments raised by a party.

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