Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board.
Summary: When resolving an obviousness challenge, the PTAB cannot invoke “ordinary creativity” of a skilled artisan to supply a missing claim limitation, without reasoned analysis and evidence.
In an IPR proceeding initiated by Apple, the PTAB found all challenged claims—directed to a wireless communication network—were obvious. On the single limitation at issue, which was not in the prior art, the PTAB found “no persuasive evidence of record that it would have been uniquely challenging or difficult for one of ordinary skill in the art to do so.”
On appeal, the Federal Circuit determined that the PTAB’s final written decision did not sufficiently support the obviousness finding. The Federal Circuit found that “ordinary creativity” or “common sense,” should only be invoked to fill in a missing claim limitation when that limitation is “unusually simple” and the technology is “particularly straightforward.” Here this was not the case. The Federal Circuit went further and determined that the record evidence could not supply the Board with a basis for a more reasoned explanation to support obviousness. For this reason, the Federal Circuit reversed, rather than remanding to the Board for additional investigation or explanation.
Judge Newman dissented, suggesting that even if the PTAB’s explanation were inadequate, the appropriate appellate action would be to remand. She noted that a reversal, thus producing a final judgment of patentability is “contrary to the body of precedent, and dilutes the purpose of these post-grant proceedings.”