PTAB’s obviousness determination for challenged patent vacated for lack of sufficient support

The alleged infringer petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review of claims in the patentee’s patent, asserting unpatentability for obviousness based on two prior-art references. The patent claims-at-issue were for methods of locating data and screening data access by giving a data file a unique name depending on the file’s content. The two references described a system for backing up data and a system for managing data access rights. The PTAB found the claims obvious based on a combination of those two references. The patentee appealed the PTAB’s claim construction and obviousness determination.

The PTAB found that a person of ordinary skill in the art would have been motivated by a “reasonable expectation of success” to combine the prior art references to arrive at the claims of the patent. In contrast, the Federal Circuit found that the PTAB’s decision was “inadequate” because the PTAB did not rely on the same portions of the prior-art as the alleged infringer’s petition and failed to explain the discrepancies. Furthermore, the PTAB did not properly explain why a person of ordinary skill in the art would consider combining the two prior-art references, as well as how the proposed combination of the references would work. Thus, the Federal Circuit vacated and remanded the PTAB’s obviousness decision because the PTAB did not sufficiently explain and support its conclusions that (1) the cited art disclosed all of the elements of the challenged claims, and (2) a relevant skilled artisan would have been motivated to combine the references in the way claimed in the patent.