Just Because One Could Doesn T Mean One Would

In Personal Web Technologies, LLC v. Apple, Inc., [2016-1174] (February 14, 2017), the Federal Circuit affirmed the Board’s claim construction but vacated the Board’s obviousness determination because the Board did not adequately support its findings that the prior art disclosed all elements of the challenged claims and that a relevant skilled artisan would have had a motivation to combine the prior-art references to produce the claimed inventions.

The Federal Circuit said that in the obviousness theory presented by Apple and adopted by the Board, the Board had to make findings, supported by evidence and explanation, on two points: First, the Board had to find all of the elements of the ’310 patent claims at issue. Second, the Board had to find that a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed by the ’310 patent.

The Federal Circuit noted that in KSR the Supreme Court said “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does” and added that “[t]o facilitate review, this analysis should be made explicit.”

The Federal Circuit said that in order to allow effective judicial review, the agency is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions. The Federal Circuit concluded that the Board’s decision was inadequate — it found that the Board did not sufficiently explain and support the conclusions that (1) the references disclose all of the elements recited in the challenged claims and (2) a relevant skilled artisan would have been motivated to combine the art in the way the ’310 patent claims and reasonably expected success.

The Federal Circuit noted that the Board’s decision cited a different reference for an element than Apple asserted in its Petition, and the Board’s citation to Apple’s petition was incorrect. The Federal Circuit further noted that the Board’s analysis did not address motivation. The Federal Circuit found that the Board’s reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. The Federal Circuit said that is not enough: it does not imply a motivation to pick out those references and combine them to arrive at the claimed invention.

The Federal Circuit said that the Board’s reasoning does not meet the requirements for a sustainable obviousness determination in this case. The Federal Circuit explained that the remand is not merely for explanation or clarification of what the Board meant in the decision, the remand is for the Board to reconsider the merits of the obviousness challenge.