June 16, 2017

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

By Bryan K. Wheelock, Principal

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of prior art.

The ‘171 patents claims methods of waterproofing leather, particularly for the manufacture of shoes, clothes, or leather accessories by lining the interior surface of the leather with a semipermeable membrane.  The Board found that one reference showed all of the elements of the claimed method except for the size and density of the adhesive dots, and that the other references taught the size and density of the adhesive dots.

The Federal Circuit agreed with the Board’s construction of “directly pressing” as to mean “applying pressure without any intervening materials or layers other than the recited adhesive.”  The Federal Circuit also discounted the “process for waterproofing leather” language of the claim, because it was in the preamble and was “simply a statement of intended use, not a separate claim limitation.”

The Federal Circuit rejected the patent owner’s argument that the Board failed to provide adequate motivation to combine the references.  After reviewing cases (Rovalma, Van Os, Arendi, Cutsforth, NuVasive, and Icon Health) where the Board did fail to provide adequate motivation, the Federal Circuit found that the Boards decision did not suffer from similar deficiencies.  The Federal Circuit said that the Board clearly articulated Petitioner’s arguments for why a person of ordinary skill in the art would have been motivated to modify the process of adhering dots to create waterproof and breathable leather with the secondary references disclosed glue patterns.  The Federal Circuit concluded that the Board engaged in reasoned decision making and sufficiently articulated its analysis in its opinion to permit review.

The Federal Circuit found that the Board’s reliance on petitioner’s arguments did not undermine its otherwise adequate explanation for finding a motivation to combine. The Federal Circuit noted that the Board did not reject the patent owner’s positions without clarity as to why it found petitioner’s arguments persuasive. It did not merely incorporate petitioner’s petition by reference, leaving uncertainty as to which positions the Board was adopting as its own. Nor was it other unclear what evidence the Board may or may not have relied on to find a motivation to combine. The Federal Circuit said that the Board is “permitted to credit a party’s argument as part of its reasoned explanation of its factual findings,” it simply must “explain why it accepts the prevailing argument.”