The US Court of Appeals for the Federal Circuit remanded a case to the Patent Trial and Appeal Board (PTAB) where the PTAB had failed to consider a specific prior art combination and unpatentability argument advanced by the petitioner against the amended claims. Shinn Fu Co. of America, Inc. v. The Tire Hanger Corp., Case No. 16-2250 (Fed. Cir., July 3, 2017) (Prost, CJ) (non-precedential).

Shinn Fu filed a petition for inter partes review (IPR), challenging all five claims of a patent owned by Tire Hanger that generally relates to methods and apparatus for handling and supporting vehicle wheels that have been temporarily removed from a vehicle positioned on a lift or hoist. The PTAB instituted review based on three asserted grounds of invalidity. In response, Tire Hanger filed a motion seeking to cancel claims one to five and replace them with substitute claims. Tire Hanger accompanied its amendments with arguments in support of patentability over the prior art cited for the instituted grounds of review as well as two newly cited prior art references. Shinn Fu opposed and presented arguments of unpatentability with regard to the references Tire Hanger identified in its motion and the two additional references.

After oral hearing, the PTAB concluded that the amended claims were patentable in light of the prior art of record and granted the patent owner’s motion to amend. In its decision, the PTAB referred to only a subset of the prior art cited by the parties. Shinn Fu appealed, arguing that the PTAB failed to consider its position of unpatentability based on one of its cited combinations of prior art.

The Federal Circuit found that the PTAB erred by ignoring the manner in which Shinn Fu proposed its obviousness combinations in opposition to Tire Hanger’s motion to amend. Despite Tire Hanger’s arguments that Shinn Fu failed to thoroughly develop its unpatentability arguments during the trial, the Federal Circuit found that “Shinn Fu described various prior art references and, more importantly here, the particular manner in which to combine them.” The Court further observed that aside from specifying the order in which to perform the recited steps, the claim amendments added human involvement to steps that an apparatus or other structure could have otherwise performed. The Federal Circuit explained that it could not review the PTAB’s analysis with respect to Shinn Fu’s described prior art combination because that analysis was completely missing from the PTAB’s decision.

Practice Note: The Federal Circuit explained that the PTAB’s error was failure to address the specific prior art combination cited by the petitioner, but that “the law does not require that the PTAB address every conceivable combination of prior art discussed throughout an IPR proceeding, no matter how duplicative the other references are.”