Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s], discredit[s], or otherwise discourage[s]” modifying the prior art in the manner claimed.
Arctic Cat filed two inter partes review petitions challenging Polaris’s patent, which is directed to all-terrain vehicles (ATVs) with two side-by-side seats. In the first IPR (“the 1427 IPR”) the Board found the claims unpatentable as obvious over one combination of references, and in the second IPR (“the 1428 IPR”) the Board found that the claims were not proven unpatentable over a second combination of references. Both parties appealed.
On appeal, Polaris challenged the Board’s finding of a motivation to combine in the 1427 IPR. The Federal Circuit affirmed the Board’s finding for two claims, but reversed with respect to a third claim. The third claim recites an ATV with side-by-side seats that, among other things, includes a fuel tank under one of the seats. The Board found that such a configuration would have been obvious to a person of ordinary skill in the art in view of a reference that taught an ATV with side-by-side seats. Polaris argued that the reference relied on by the Board taught away from including such a fuel tank because the reference taught that maintaining a low center of gravity was a goal of the disclosure. Polaris’s expert testified that modifying the ATV to include a fuel tank under the seats would substantially raise the center of gravity. The Board dismissed this argument, stating that the low center of gravity was a “subjective preference” that did not rise to the level of a teaching away. The Federal Circuit reversed, finding that the “subjective preference” test had no basis in precedent, and instructed the Board to perform the usual teaching away analysis on remand.
The Federal Circuit also rejected challenges to the Board’s claim constructions, finding the Board properly relied on the “broadest reasonable interpretation” standard. The Federal Circuit addressed Polaris’s arguments regarding evidence of commercial success, reversing the Board and instructing the Board to consider Polaris’s undisputed evidence of commercial success.
Finally, the Federal Circuit addressed Arctic Cat’s challenges regarding the 1428 IPR. The Federal Circuit rejected Arctic Cat’s claim construction arguments, finding that Arctic Cat’s proposed construction was not reasonable in light of the specification and other evidence.