The Federal Circuit Court of Appeals again vacated a Patent Trial and Appeal Board (PTAB) panel decision for failing to properly evaluate “objective evidence of non-obviousness” and remanded the case for determinations consistent with its opinion. Specifically, the Fed. Cir. panel faulted the PTAB’s analysis Patent Owner’s objective evidence of unexpected results and further found that Board had applied a “legally erroneous” standard by placing the burden on the patent owner to show that one skilled in the art would have expected “failure.” (See, Honeywell International v. Mexichem Amanco (Fed. Cir. No. 2016-1996, August 1, 2017).
The case involved an appeal to the PTAB of one of the last inter partes re-examinations to be rendered before the new America Invents Act (AIA) went into effect and provided new proceedings for challenging patents. Nonetheless, the standards for evaluation of objective evidence of non-obviousness are equally applicable to inter partes review (IPR) and post grant review (PGR) proceedings. And this case can be seen as yet another volley in the Federal Circuit’s ongoing criticism of how the PTAB has treated objective evidence of non-obviousness in many of its decisions.