PTAB Not Barred from Using Patent Owner Submissions as a Basis for Holding Claims Unpatentable

Written by Casey D. Donahoe, Ph.D. and Benjamin Anger

The Federal Circuit vacated and remanded the PTAB’s final written decision holding that claims directed to steel making methods were obvious in Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, No. 2016-2233 (Fed. Cir. May 11, 2017).

The PTAB instituted IPR of Rovalma’s patent based on Bohler’s proposed claim construction.  In its final written decision, however, the PTAB dropped Bohler’s claim construction in favor of Rovalma’s proposed claim construction.  Even while adopting Rovalma’s proposed construction, the PTAB still found the challenged claims obvious over prior art proffered by Bohler in combination with Rovalma’s own submissions related to the background of the invention and in view of statements made by Rovalma’s counsel at the oral hearing.

The Federal Circuit remanded, finding that the PTAB’s decision both lacked sufficient evidence and was procedurally inadequate.  The Federal Circuit found that the PTAB had not sufficiently explained its reasoning for finding each of the recited steps obvious, for finding motivation to modify the prior art, or for finding a reasonable likelihood of success in doing so.  The court noted that such a lack of clarity inhibited its substantive review and would pose a danger of the court intruding on the agency’s fact-finding authority. 

The Federal Circuit rejected Rovalma’s argument that the PTAB exceeded its statutory authority by drawing inferences as to patentability from Rovalma’s own evidentiary submissions.  While the PTAB may use a patent owner’s own submissions to hold the claims unpatentable, here the Federal Circuit remanded for further explanation of the particular inferences the PTAB had drawn from Rovalma’s evidentiary submissions and to evaluate whether Rovalma was given adequate opportunity for rebuttal argument.