The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious. In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 that concluded various claims of NuVasive, Inc’s U.S. Patent No. 8,361,156 were invalid as obvious over a combination of prior art references. The patent claims spinal fusion implants, and were challenged by Medtronic Inc.
The court’s opinion helpfully explains the type of information PTAB decisions must include for the court to perform meaningful appellate review. Specifically, the PTAB must find facts, adequately supported by the evidence, must examine these facts, and then articulate in a final written decision “a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Slip op. at 8. The disposition of this IPR and appeal turned on whether there was evidence of a motivation to combine the prior art, and whether the PTAB explained as much. Accordingly, the court also identified some insufficient articulations of motivation to combine prior art:
First, “conclusory statements” alone are insufficient and, instead, the finding must be supported by a “reasoned explanation.” Second, it is not adequate to summarize and reject arguments without explaining why the PTAB accepts the prevailing argument.” Third, although reliance on common sense may be appropriate in some circumstances, the PTAB cannot rely solely on common knowledge or common sense to support its findings.
With these principles in mind, the court concluded that the PTAB failed to explain the reason why a person of ordinary skill in the art would have been motivated to combine and/or modify the prior art references to arrive at the invention claimed in NuVasive’s patent. The court characterized the majority of the PTAB’s analysis as being limited to summaries of the parties’ arguments, and criticized the PTAB for adopting the petitioner’s (Medtronic’s) arguments without itself providing “reasoned explanations for crediting the arguments.” Id. at 12. The court also criticized the petitioner’s arguments as “amount[ing] to nothing more than conclusory statements.” Id.
The patent owner is likely pleased with Federal Circuit’s disposition of the appeal, but likely would have preferred the court to simply reverse the PTAB’s decision, thus ending the parties’ dispute. The Federal Circuit instead offers the PTAB a do over, and in so doing may be suggesting the record might support findings sufficient to support the PTAB’s original conclusion.