US Inventor Files Amicus Brief With CAFC in Support of En Banc Rehearing on Single-Reference Obviousness Issue

On August 1st, the non-profit inventor advocacy group US Inventor filed an amicus brief with the Court of Appeals for the Federal Circuit asking the court to grant a petition for en banc rehearing in American Vehicular Sciences LLC v. Unified Patents Inc. The case, which stems from the Patent Trial and Appeal Board (PTAB), involves issues regarding obviousness which US Inventor argues that the Federal Circuit should resolve through the en banc rehearing of this case.

This appeal follows an inter partes review (IPR) proceeding at the PTAB petitioned by Unified Patents to challenge the validity of U.S. Patent No. 9043093, titled Single Side Curtain Airbag for Vehicles. Issued in May 2015, it claimed an airbag system of a vehicle that provides an improved side curtain airbag system with an associated inflator which inflates the airbag in accordance with the ambient temperature to ensure the proper air pressure in the airbag.

Unified Patents filed its petition for IPR proceedings on the ‘093 patent in December 2015 and the PTAB decided to institute the IPR in June 2016. In a final written decision issued by the PTAB in May 2017, all challenged claims of the ‘093 patent were invalidated as unpatentable on grounds of obviousness in light of a combination of three U.S. patents asserted as prior art. These include U.S. Patent No. 3897961, titled Inflatable Restraint Apparatus (“Leising”); U.S. Patent No. 5273309, titled Air Bag for Side Impact (“Lau”); and U.S. Patent No. 5588672, titled Side Impact Head Restraint with Inflatable Deployment (“Karlow”). Patent claims of the ‘093 patent were invalidated as obvious based on either the combination of Leising and Lau or the combination of Karlow and Lau. American Vehicular Sciences appealed the PTAB’s decision to the Federal Circuit and the appellate court issued a Rule 36 judgement this June affirming the PTAB without issuing an opinion.

“This Court should grant Petitioner’s request for rehearing en banc because it presents an opportunity to resolve conflicting Federal Circuit jurisprudence concerning single-reference obviousness that is undermining needed uniformity and predictably in patent validity considerations,” US Inventor’s brief reads. The single-reference issue is a significant one at the PTAB, US Inventor argues, citing an article published last December which found that 40 percent of PTAB institutions include an obviousness theory involving a single reference. Although Unified Patents presented a combination of prior art references at the PTAB, the combination of references did not disclose a side curtain airbag so Unified Patents conceded to the Federal Circuit that it was presenting a single reference modification theory.

In petitioning for the en banc rehearing, American Vehicular Sciences notes that Federal Circuit decisions prior to and after the U.S. Supreme Court’s 2007 decision in KSR International v. Teleflex, a case which centered on obviousness issues, have applied varying legal standards in determining obviousness of patent claims based on a single reference. American Vehicular Sciences identified up to four different legal standards used by the Federal Circuit to determine single-reference obviousness.

The uncertainty created by these different legal standards used by the Federal Circuit and affecting validity determinations in the lower courts, the PTAB and the U.S. Patent and Trademark Office places a disproportionate burden on the “little guy” small inventor represented by US Inventor. This uncertainty in determining the validity of an invention disincentivizes small inventors from taking risks and experimenting to create an invention at a time when the United States is facing an innovation crisis. US Inventor notes that China has been outpacing the U.S. in terms of startup funding for artificial intelligence developers and that patent applications filed in China has been outpacing U.S. patent applications at a rate of about 2-to-1.

“Doubt as to how a single reference may be used to challenge an invention is no friend to the patent community,” US Inventor notes, arguing that such uncertainty threatens investment into the invention and discourages the ability of small inventors to use their intellectual property. Such issues could even affect the process of prosecuting a patent application at the USPTO; a single, clear standard could wind up reducing examiner rejections and would enable a patent applicant to respond to rejections by arguing under that single standard instead of having to make four different arguments just to be safe.

Terry Fokas, General Counsel of US Inventor, provided the following statement on the issues presented by American Vehicular Sciences:

“We believe that this is an extremely important issue, the pervasive split within the Federal Circuit. It is one of many issues that have affected small individual inventors in creating uncertainty as to what rights inventors have or don’t have within the U.S. patent system.”