By Matthew L. Cutler, Principal
The PTAB was rebuked by the Federal Circuit on January 22nd for failing to provide an adequate description of its reasoning for finding the claims of the challenged patent obvious in an inter partes review proceeding. In Cutsforth, Inc. v. MotivePower, Inc., Judge Clevenger, in a non-precedential opinion, analyzed the obviousness finding from the Board, as set forth in the Final Written Decision. Among the aspects of the Board’s decision analyzed by the Court were:
- In its analysis of claim 1, the Board referenced Petitioner’s arguments, but did not state an independent reason for why the claim was obvious and did not formally adopt those arguments.
- In its analysis of claim 5, the Board only conclusorily stated that the limitation at issue was a “matter of design choice.”
- In its analysis of claim 8, the Board again repeated Petitioner’s argument but gave no other reason why the modification at issue was obvious.
The Court criticized the Board for failing to adequately articulate its reasoning for making its decision so that the Court could conduct a meaningful review. “Broad, conclusory statements are not enough to satisfy the Board’s obligation to provide reasoned explanation for its decision.” Id. at 6.
This non-precedential opinion has the aura of a building frustration at the Federal Circuit regarding an ongoing problem with the quality of the Final Written Decisions. Many of those decisions are thorough and complete, but others can be said to lack the necessary detail of a formal opinion, even if the conclusions of the decision are clearly correct. The Federal Circuit took this opportunity to let the Board know that shortcut analyses will not past muster.
It is good feedback from the Court, but an ironic decision. The decision is ironic because the Federal Circuit has, to date, made liberal use of Rule 36 Judgments – a one word decision (“AFFIRMED”) that provides no information about the Court’s analysis. Just as the Court required adequate description of the Board’s rationale for its decision, many would prefer more feedback from the Court regarding its rationale to better educate parties regarding the nuances of IPR.