In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims. With respect to the upheld claims, the court remanded the matter because the PTAB failed to adequately explain its findings, noting that the PTAB’s “disagreement with [the petitioner] … does not amount to a satisfactory explanation for its finding” that those claims are not unpatentable. Google at 12. The decision is interesting because it again drives home the importance of the PTAB explaining its own findings rather than simply stating it rejects arguments presented by a party. See In re Nuvasive Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016)(explaining that the PTAB cannot “summarize and reject arguments without explaining why the PTAB accepts the prevailing argument”).

Petitioner, Google, sought inter partes review of claims 1-3, 5, 7-10, 12-14, 19-22, and 24-30 of the ’960 patent, which is directed to a screen peripheral system that includes a touch-activated input device for generating and displaying a composite image of, for example, a keyboard and a main image. Petitioner asserted that these claims were anticipated by U.S. Patent No. 5,638,501 to Gough et al. (“Gough”) and made obvious by U.S. Patent No. 6,118,427 to Buxton et al. (“Buxton”). The Board determined that Gough did not anticipate, and Buxton in combination with two other patents did not render obvious claims 1-3, 5, 7-10, and 12-14. In determining Gough did not anticipate, the PTAB did not explain why it dismissed Petitioner’s expert testimony regarding how a person of ordinary skill in the art would have understood certain figures in Gough to depict a logical operator, and the PTAB did not identify any substantive evidence to rebut Petitioner’s evidence or discredit its expert. Google at 13. In determining that Buxton does not render the claims obvious, the PTAB did not provide any rationale for its factual findings, did not acknowledge any of Petitioner’s evidence or explain why it considered such evidence unconvincing, and merely agreed with the Patent Owner’s argument, which was based on a single dictionary definition. Id. at 14. Additionally, the PTAB did not disclose the scope of all evidence and arguments considered, asking oral argument questions directed to an exhibit that it said it did not rely on in rendering its final decision, and remaining silent regarding an alternative argument presented by Petitioner for finding that Buxton disclosed logical operators. Id. at 15.

On appeal, Petitioner argued that substantial evidence did not support the PTAB’s decision regarding these claims. The Federal Circuit agreed, vacating that portion of the decision and remanding for the PTAB to provide additional fact findings and explanations for its conclusions regarding the anticipation and obviousness determinations as to claims 1-3, 5, 7-10, and 12-14. Further, the Federal Circuit reiterated from its decision in Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017), that the PTAB, in rendering final written decisions, must: (1) “make the necessary findings and have an adequate evidentiary basis for its findings” and (2) “examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Google at 12. In Icon Health, an appeal from a PTAB inter partes reexamination decision, the Federal Circuit found that the PTAB failed to “make the requisite factual findings or provide the attendant explanation” with respect to a certain subset of claims at issue. Specifically, the PTAB provided no substantive discussion of the limitations at issue apart from a catch-all statement incorporating by reference the examiner’s remarks, which in turn referenced arguments drafted by the patent-challenger’s attorney. Icon Health, at 1043-47, . However, the PTAB’s disposition of other claims in Icon Health were supported by its incorporation of the examiner’s remarks because there the examiner provided factual findings regarding the scope and content of known elements in prior art references in rejecting those claims. Id. at 1044-45.

Practitioners who receive an adverse decision from the PTAB in an IPR should keep in mind that the simple rejection of an argument presented in an IPR without an explanation as to why the PTAB accepted the prevailing argument may leave open the possibility of an appeal based on lack of substantial evidence supporting the PTAB’s decision. Practitioners would be wise to provide quality rebuttal arguments that the PTAB may recite to explain not only why their argument is correct but also why their opponent’s argument is incorrect.