In Personal Web Technologies, LLC v. Apple, Inc., the Court of Appeals for the Federal Circuit was asked to review a Final Written Decision in an Inter Partes Review issued by the Patent Trial and Appeal Board (“the Board”) that found an invention obvious over a combination of prior art.1 In a precedential opinion vacating the obviousness determination, the panel of Circuit Judges held that the Board did not properly support its findings that the prior art “disclosed all elements of the challenged claims” and that a person of ordinary skill in the relevant art would have had the adequate motivation to combine the references.2 The apparent requirement that the prior art disclose all elements of the challenged claims is in tension with previous Federal Circuit decisions that have allowed obviousness challenges even when all elements were not disclosed in the prior art, so long as an adequate motivation to modify a prior art reference exists.3
Thus, Personal Web Technologies raises the question of whether the Federal Circuit is moving toward a more narrow view of what is required to show obviousness. However, the panel in Personal Web Technologies appears to have been most concerned with a lack of supporting evidence supporting the Board’s conclusion invalidating the patent.4 A party seeking to invalidate a patent under an obviousness theory, or a party defending against one, may still do well to stay apprised of how future Federal Circuit panels treat this opinion.
The Federal Circuit’s Opinion in Personal Web Technologies v. Apple
In Personal Web Technologies, a panel of the Federal Circuit reviewed the Board’s finding of obviousness5 and required two interrelated determinations supported by “evidence and explanation.”6 The first determination required finding “all of the elements” of the claims at issue in the cited prior art.7 The second required a showing of the motivation that would have led a person of ordinary skill in the art to actually combine the prior art references to result in the invention claimed by the patent at issue.8 The panel found that the Board did not satisfy their burden of supporting either finding.9 The Board was also faulted for citing to portions of the references not suggested by the Petitioner and for failing to “explicitly say, let alone explain” how other claimed elements were disclosed.10 As far as the motivations to combine, the panel criticized the Board’s opinion for summarily agreeing with the Petitioner’s contentions, without satisfactorily justifying its agreement.11 The circuit judges reminded the reader, however, that not every case required an in depth explanation of these two findings, the level of complexity of the technology at issue may act as a rough guide.12
Prior Federal Circuit Precedent Permits An Obviousness Analysis Without An Explicit Disclosure of All Elements in the Prior Art
A requirement that “all of the elements” of the claimed invention be found in the prior art seems to be in tension with several previous Federal Circuit rulings.13 For example, as recently as February 2016, the Federal Circuit has expressed the need for flexibility in the obviousness determination.14 In Nike, Inc. v. Adidas AG, the panel agreed that a lack of explicit disclosure of a claim element in the prior art could be overcome by “some reason why one of skill in the art would modify the prior art to obtain the claimed invention.”15 The Federal Circuit has even endorsed “common sense” as a reason to add a missing limitation, if adequately supported by the record at hand.16
By apparently requiring “all of the elements” of the claimed invention to be shown in the prior art, the court may have been writing to the specific record17 because the ultimate decision did not necessarily rely on whether or not an element of the invention was adequately disclosed.18 Instead, Personal Web Technologies involved a number of perceived missteps by the Board, but in theory, any alone could have created the same result.19 Furthermore, the Petitioner did assert that all of the claimed elements were present, even if the Board failed to properly cite to them.20 Ultimately, neither Personal Web Technologies nor Nike relied on the explicit appearance, or lack thereof, of “all of the elements,” as the crucial factor, so whether a split in authority at the Federal Circuit may be developing remains uncertain.
What the decisions reveal, however, is that the most conservative approach to presenting an obviousness theory that would withstand an appellate challenge would involve a showing that “all of the elements” of the challenged claims are present in the prior art. The cases further agree that articulated reasoning supported by evidence is the preferred route when explaining the motivations of a person of ordinary skill in the art to make modifications or combinations of the prior art. A practitioner can help herself, and her client, by helping the fact-finder with strongly supported argument rooted in a compelling evidentiary record.
1 848 F.3d 987 (Fed. Cir. 2017).
2 Id. at 988-89.
3 See e.g., Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307–08 (Fed. Cir. 2006) (“A claim can be obvious even where all of the claimed features are not found in specific prior art references, where there is a showing of a suggestion or motivation to modify the teachings of [the prior art] to the claimed invention.”) (quoting SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000)).
4 Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d at 988-89.
5 The question of obviousness is rooted in 35 U.S.C. § 103: “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”
6 Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d at 991.
9 Id. at 993.
11 Id. at 994.
12 “A brief explanation may do all that is needed if, for example, the technology is simple and familiar and the prior art is clear in its language and easily understood. On the other hand, complexity or obscurity of the technology or prior-art descriptions may well make more detailed explanations necessary.” Id. (internal citations omitted).
13 See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (considering whether common sense could supply a missing limitation); Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007); Malico, Inc. v. Cooler Master USA Inc., 594 F. App'x 621, 628 (Fed. Cir. 2014) (vacating and remanding where the district court failed to “explain how [the prior art] either disclose[d] or could be modified in an obvious manner to meet [the] limitations recited in the claims”); see also supra n.3.
14 Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016).
16 Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-31 (Fed. Cir. 2009).
17 In reciting the applicable legal standards the Board stated “[t]o establish obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art.” Apple, Inc., Petitioner, IPR2013-00596, 2015 WL 1777147, at *6 (Mar. 25, 2015) (citing CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
18 Pers. Web Techs., Inc. v. Apple, Inc., 848 F.3d at 994.
20 Id. at 993.
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