Addressing the obligation of the Patent Trial and Appeal Board (PTAB or Board) to articulate “logical and rational” reasons for its conclusions, the US Court of Appeals for the Federal Circuit remanded a portion of a PTAB inter partes review decision for additional explanation to support conclusory findings in the final written decision. In re: Warsaw Orthopedic, Inc., Case Nos. 15-1050; 1058 (Fed Cir., Aug. 9, 2016) (Wallach, J).
The patent at issue in this case relates to a method of spinal surgery that “insert[s] an artificial implant between two adjacent vertebrae” from a patient’s side. This lateral approach to spinal surgery aims to avoid complications that may arise when the surgery is performed from the front or back of a patient. After the PTAB found that two independent claims of the patent at issue would have been obvious over a combination of three prior art references, Warsaw appealed.
Warsaw made three arguments on appeal:
- The PTAB misinterpreted one of the three references relied on for its obviousness determination because the reference does not disclose dimensions that meet the claim limitation “substantially the full transverse width” in two of the representative claims.
- The PTAB erred in its motivation to combine analysis by relying on reasoning of what a person having ordinary skill in the art “could” have been motivated to do instead of what such a person “would” have been motivated to do.
- The PTAB did not adequately explain how one of the references (Jacobson) disclosed a key limitation of one of the patent’s independent claims.
The Federal Circuit affirmed the PTAB’s decision on the first two issues. The Court explained that “[o]bviousness does not require the prior art to reach expressly each limitation exactly,” and pointed out that the PTAB determined that a person having ordinary skill in the art “would have” been motivated to combine the three prior art references, and provided a reasoned explanation for reaching that conclusion.
Addressing Warsaw’s third argument—that the PTAB did not adequately explain how the Jacobson reference disclosed the claimed “elongated portions” limitation—the Federal Circuit agreed with Warsaw. The Court found that the PTAB’s single conclusory sentence finding that Jacobson disclosed the subject limitation failed to meet the PTAB’s independent obligation to make an administrative record of its findings based on “logical and rational” reasoning. The Court noted that if, on appeal, it can follow the logic of the PTAB ruling, it may affirm “even if that path is less than perfectly clear.” In this case, the Federal Circuit could not reasonably discern that the PTAB’s decision as to the “elongated portions” limitation followed the proper path, and remanded this issue to the PTAB for additional explanation.
Practice Note: The PTAB is required to articulate “logical and rational” reasons for its decisions; conclusory statements with inadequate explanation provided in support are insufficient.