In a recent decision vacating the PTAB’s obviousness findings in an IPR, the Federal Circuit set forth criteria necessary to support future obviousness findings. Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016) (nonprecedential).
In its 2014 IPR petition, the Petitioner challenged all claims of the patent at issue as being invalid for obviousness over a combination of references. The Board instituted review of all claims on this ground and ultimately found all claims invalid for obviousness in its final written decision.
On appeal, the Federal Circuit upheld the Board’s claim constructions but vacated the Board’s obviousness finding because the Board did not “provide enough explanation to support its finding.” According to the Federal Circuit, the Board’s final written decision did not state any “independent reasons” of obviousness, formally adopt the reasons given in the Petitioner’s arguments, or give reasons why one of ordinary skill in the art would know to combine elements from the cited references.
In discussing its rationale for vacating the Board’s decision, the Court stated that the Board must “articulate its reasoning” why a person of ordinary skill in the art would find a combination obvious. “Broad and conclusory statements” are not adequate to meet this threshold. The Court found that the PTAB merely summarized the Petitioner’s obviousness arguments and offered only “conclusory analysis of its own.” This, according to the Federal Circuit, is not sufficient reasoning to support an obviousness finding.
This decision clarifies the level of support necessary to uphold an obviousness finding. As the decision shows, the PTAB must either formally adopt the obviousness reasoning of a party’s arguments or provide its own reasoning why a person of ordinary skill in the art would find an asserted combination obvious. Most importantly, the Board must avoid mere conclusory statements of obviousness. Unless the Board provides adequate reasoning, the Federal Circuit cannot properly review whether there is “substantial evidence” to support an obviousness finding.