Conclusory approach to obviousness by PTAB in IPR insufficient to render claims invalid

DSS Tech. Mgmt. v. Apple Inc., Nos. 2016-2523, 2016-2524, 2018 (Fed. Cir. Mar. 23, 2018) (Before Newman, O’Malley, and Reyna, J.) (Opinion for the court, O’Malley, J.) (Dissenting opinion, Newman, J.)

DSS successfully challenged the Board’s finding of obviousness of claims 1–4 and 9–10 of its ‘242 patent.  The patent is for a wireless communication network for a single host and multiple peripheral devices. The obviousness ruling turned on one limitation of claim 1, reciting “said server and peripheral transmitters being energized in low duty cycle RF bursts.” The pertinent prior art reference, Natarajan, also performs power conservation on wireless link adapters at the mobile units. However, Natarajan did not disclose reduced power consumption for its base station transmitter, analogous to the mobile station in the ‘242 patent. At issue was whether it would have been obvious to modify the base station in Natarajan to include “energized in low duty cycle RF bursts” from claim 1.

The Federal Circuit found that the Board failed to provide sufficient explanation for its obviousness finding, instead using a conclusory approach that asked whether the missing limitation resulted from “ordinary creativity” of a skilled artisan. According to the panel majority, the question of whether the claims resulted from ordinary creativity was akin to asking whether the claims were obvious as a result of common sense. Therefore, the Federal Circuit began by returning to it’s 2016 ruling in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016), which dealt with the proper use of common sense as part of an obviousness rejection.

Ordinarily, common sense is use in an obviousness rejection, Judge O’Malley explained, in order to provide a motivation to combine, but not for the purpose of supplying a missing claim limitation. Further, common sense is further limited to only supplying an unusually simple feature in straightforward technology, and cannot use be used to replace reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the references.  Arendi S.A.R.L. at 1361–62. In this case, the panel majority determined the power conservation feature lacked simplicity and played a major role in the claimed subject matter. The Federal Circuit also noted the lack of evidentiary support provided by Apple’s expert who only gave “conclusory statements and unspecific expert testimony.”

More specifically, the panel majority explained that the full extent of the Board’s analysis relating to obviousness was contained in a single paragraph. O’Malley explained:

After acknowledging that Natarajan does not disclose a base unit transmitter that uses the same power conservation technique, the Board concluded that a person of ordinary skill would have been motivated to modify Natarajan to incorporate such a technique into a base unit transmitter and that such a modification would have been within the skill of the ordinarily skilled artisan. Id. In reaching these conclusions, the Board made no further citation to the record. Id. It referred instead to the “ordinary creativity” of the skilled artisan. Id. (quoting KSR, 550 U.S. at 420-21). This is not enough to satisfy the Arendi standard.

Judge Newman Dissenting:

Judge Newman dissented from the majority because 1) she believed the Board’s explanation was sufficient; and 2) if the Board’s explanation was insufficient, the Court should remand or decide the question of law.

According to Judge Newman, because the Board’s claim construction acknowledged both sides’ arguments, and acknowledged Apple’s expert’s testimony, there was substantial evidence and explanation in the Board’s decision to support the determination that the claims were obvious. Notwithstanding, Judge Newman wrote: “In the event that the PTAB’s findings or reasoning is deemed inadequate for appellate review, the proper appellate response is not to cement this inadequacy into a final judgment for the opposing party.”

Take Away

A claim limitation missing from the prior art will not be supplied by common sense when the technology is not straightforward, the limitation plays a major role in the claims, and no strong evidence to the contrary is of record.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 2 Comments comments.

  1. Anon April 1, 2018 9:02 am

    Thank you for covering this.

    Not only is this worth covering on its own merits, this too impacts the even higher standard of proving that something is well beyond novel or obvious and is so well-known and broadly used so as to be conventional (vis a vis the factual component of examining that is so often LACKING in the conclusory manner in which examiners “follow” the examination for the 101 “two step”).

  2. The Time Is Now To Act April 2, 2018 1:50 pm

    Am certainly thankful for the portion of bread.

    That a ruling on this common PTAB abusive practice was needed is proof positive that the experiment bombed and the PTAB needs to be Abolished. The tribunal is not going to stop producing nonsensical outcomes that cripple patent value. Bank on that.