The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), unequivocally required that any analysis leading to a conclusion of obviousness “should be made explicit” to facilitate subsequent review. According to KSR, an Examiner should establish an “apparent reason” to modify the reference or to combine reference teachings. However, all too often, findings of obviousness are made that are not supported by the record. In a number of recent decisions, the Federal Circuit has overturned obviousness determinations by the Patent Trial and Appeals Board (referred to as “PTAB” hereinafter) for lack of adequate support. These cases reflect the Federal Circuit’s concern about findings of obviousness that are conclusory.
First, at issue in Personal Web Technologies, LLC vs. Apple, Inc., Case No. 2016-1174 (Fed. Cir., decided February 14, 2017), were the claims of U.S. Patent No. 7,802,310, which was subject to an inter partes review. The claims include locating data and controlling access to data by giving a data file a substantially unique name that depends on the file’s name, using mathematical algorithms to generate the file name and comparing the file names with a plurality of values in a network. The claims also include determining whether a user should be provided or denied access to the data. The PTAB agreed with Apple that the claims of the patent in question were obvious. The Federal Circuit vacated this decision by the PTAB and remanded the case, finding that the PTAB’s reasoning did not adequately support its obviousness determination. The Opinion states:
“But [the Board’s reasoning] seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at a claimed invention.” (emphasis added).
Second, at issue in In re Schweickert Case No. 16-1266 (Fed. Cir., decided January 26, 2017), was a U.S. patent related to a portable media player that optimized data transfer from a spinning storage medium. The optimization of the data transfer process relied on the structure and organization of individual buffers that were “lockable,” meaning that at any given time, a selected buffer storing compressed digital data could be temporarily locked so that the data could be overwritten. During an ex-parte reexamination of the patent at issue, the Examiner had concluded that the patent claims were obvious. On appeal, the PTAB affirmed the Examiner’s conclusion of obviousness, relying on a combination of two references. In the opinion, the Federal Circuit vacated the PTAB’s decision and remanded, stating:
“[T]he Board did not substantiate its decision. Rather, the Board, at best, merely posited that a skilled artisan could combine [the two references cited], notwithstanding any difficulties, and would do so because these references were within the knowledge of a skilled artisan. But in view of the record, this broadly-stated conclusion suffers from hindsight bias.” (emphasis added).
Third, at issue in In re Van Os, Case No. 15-1975 (Fed. Cir., decided January 3, 2017), were the claims of a patent application directed towards a graphical user interface that allowed a user to rearrange displaced icons after entering a particular type of interface reconfiguration mode. The claims were finally rejected by the Examiner. On appeal, the PTAB affirmed the obviousness rejection of four claims while reversing other rejections. The Federal Circuit vacated the decision by the PTAB and remanded the case, finding that neither the PTAB nor the Examiner had:
“provided any reasoning or analysis to support a finding of motivation to add Gillespie’s disclosure to Hawkins beyond stating it would have been an ‘intuitive way’ to initiate Hawkins’ editing mode. The Board did not explain why modifying … would have been ‘intuitive’ or otherwise identify a motivation to combine.” (emphasis added).
These decisions serve as a reminder that the PTAB and the U. S. Patent and Trademark Office are required to adequately explain or justify their reasoning in obviousness determinations. Therefore, one of the first things to check when reviewing an obviousness determination in a PTAB decision (or Office Action) is whether the respective agency has indeed met the burden of supporting its determination. Are each of the claimed limitations supplied by a prior art reference? Is there an explanation of why and how a person skilled in the art would manipulate the primary reference to achieve the claimed invention? Digging into these technical details may provide the key to a successful appellate strategy. Indeed, as the saying goes, “the devil is in the details.”