The Patent Trial and Appeal Board (PTAB) recently entered final written decisions in Ariosa Diagnostics v. Verinata Health, Inc., IPR 2013-00276, Paper No. 43 (“Ariosa”) and Athena Automation Ltd. v. Husky Injection Molding Systems Ltd. IPR2013-00290, Paper No. 45 (“Athena”) that denied grounds based on anticipation and obviousness. These decisions emphasized a similar analytical shortcoming the Petitioners’ invalidity analyses - how a person of ordinary skill in the art would have combined the cited prior art elements to arrive at the claimed invention. As quoted in Ariosa, “[a] brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (Fed. Cir. 1999).
In Ariosa, the PTAB instituted inter partes review of claims 1-18 of U.S. Patent No. 8,318,430 (“the ’430 patent”) on the ground of obviousness in view of three prior art references. (Pg. 2). In the final written decision, the PTAB emphasized the lack of analysis in the petition and accompanying expert declarations on the asserted ground of obviousness. The PTAB described the Petition and Declarations as merely providing a claim chart, but that “there is no mention in the Petition or the Declarations of any differences between the claimed subject matter and the prior art, beyond a single statement that ‘Dhallan does not teach indexing.’ Moreover, nowhere is it explained how one of ordinary skill in the art would go about combining the disparate elements of the references, not is it explained what modifications one of ordinary skill in the art would necessarily have made in order to combine them.” (Pp. 11-12).
The PTAB further found that “virtually no effort [was] made to explain how or where the references differ from the challenged claims, how one of ordinary skill in the art would go about combining their disparate elements, or what modifications one of ordinary skill in the art would necessarily have made in order to combine the disparate elements.” (Pg. 16). The PTAB spelled out what it sought in an obviousness analysis:
What is lacking in the Petition and accompanying Declarations is an “articulated reason with some rational underpinning to support the legal conclusion of obviousness. Kahn, 441 F.3d at 988. The inadequacy of the obviousness analysis in the Petition and accompanying Declarations is readily apparent when the disparate elements of the references are scrutinized closely, as in Patent Owner’s response, and we decline to search through the record and piece together those teachings that might support Petitioner’s position.
In similar fashion to Ariosa, the PTAB in Athena were not persuaded by arguments relating to anticipation and obviousness that lacked sufficient explanation. The PTAB instituted inter partes review of U.S. Patent No. 7,670,536 (“the ’536 patent”) on three grounds, asserting anticipation and obviousness based on three prior art references. (Pg. 2). The PTAB ultimately held in favor of the Patent Owner on two of the grounds, but found that claims 1, 4-16, 18 and 20-22 were anticipated. The PTAB also denied Patent Owner’s motion to amend and its motion to exclude.
The PTAB ruled against the first ground of anticipation because the Petitioner failed to explain how the cited prior art elements would have been combined to meet the claimed invention. (Pg. 31). Quoting the Federal Circuit, the PTAB explained that patent claims cannot be treated as mere catalogs of separate parts without regard for the part-to-part relationships set forth therein. (Id., citing Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008); Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). The PTAB also ruled against the second ground of obviousness because Petitioner did not point to a known rationale for modifying or combining the prior art as claimed. (Pg. 34, citing In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989)). Likewise, the PTAB denied the Patent Owner’s motions to amend claims because Patent Owner failed to point to persuasive evidence that the proposed limitations would not have been obvious in view of the prior art of record. (Pp. 46, 48 and 51).
These final written decisions provide guidance as to the requisite level of analysis regarding anticipation and obviousness. Mere identification of claim elements in the prior art, without a detailed explanation of how these elements would have been combined in practice, may likely fall short before the PTAB. Accordingly, Petitioners should consider providing a practical explanation of how a person of ordinary skill in the art would have combined elements in the prior art, acknowledging any challenges that such modifications would have presented and explaining how a person of ordinary skill would have overcome these obstacles. Patent Owners should similarly consider attacking grounds of invalidity for such analytical insufficiencies.