August 9, 2016

Federal Circuit Vacates and Remands PTAB Obviousness Determination Not Supported by Adequate Reasoned Explanation

By Bryan K. Wheelock, Principal

In In re Warsaw Orthopedic, Inc., 2015-1050, 2015-1058 (August 9, 2016), the Federal Circuit affirmed in part, vacated in part, and remanded the PTAB’s decision in IPR2013-00206 and IPR2013-00208 that claims 1–8 and 17–23 of U.S. Patent No. 8,251,997, were obvious and therefore invalid.

The Federal Circuit largely affirmed the PTAB obviousness determination.  However, the Federal Circuit noted the PTAB has an obligation to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.  As for its reasoning, the PTAB must articulate “logical and rational” reasons for its decisions.

The Federal Circuit said it could affirm the PTAB’s findings if it can reasonably discern that that the PTAB followed a proper path, even if that path is less than perfectly clear.  However, with respect to the obviousness determination of claim 17, the Federal Circuit could not reasonably discern the PTAB’s decision.  The Federal Circuit complained that the PTAB’s narrative in support of its finding with respect to claim 17 consists of a single sentence, which “does not equate to the reasoned explanation needed to support its conclusion.”  Thus the Federal Circuit vacated and remanded for additional explanation.