In a decision last week, the Federal Circuit remanded for further consideration the Board’s final written decision concluding that the challenged claims of Verinata Health, Inc.’s U.S. Patent No. 8,318,430 were not obvious. See Ariosa Diagnostics v. Verinata Health,Inc., Case No. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015). The Board’s conclusion was based, in part, on its decision to accord no weight to an aspect of declaration testimony the Petitioner (Ariosa) offered in support of its reply brief. The Federal Circuit stated that the language of  the Board’s final written decision regarding this conclusion was too vague to allow the Federal Circuit to determine if the Board’s action was legally proper.

The Verinata patent is directed to a method for non-invasive prenatal testing for the presence of fetal chromosomal abnormalities. Ariosa challenged claims 1-30 as obvious in light of three prior art references. In its decision finding that Ariosa had not met its burden, the Board declined to consider two separate pieces of evidence cited in Ariosa’s reply brief because its regulations and Rules of Practice require that reply evidence “must be responsive and not merely new evidence that could have been presented earlier.”

In its Reply, Ariosa submitted a second declaration from one of its experts to bolster its reliance in the Petition on a brochure that described a commercially-available Genome Analyzer Sequence (Exhibit 1010). The Board stated that it accorded no weight to that aspect of the expert’s testimony because it was not presented as part of the asserted ground of unpatentability in the petition. On appeal, Ariosa argued that this exhibit had been referenced in its earlier declarations and that it should have been considered by the Board as background knowledge that a skilled artisan would have possessed. The Federal Circuit agreed that, if the Board meant that it was declining to consider the brochure even as background because it was not identified as prior art supporting the instituted ground, then the Board erred. Because the Board did not sufficiently articulate why it was according the evidence no weight, the Court remanded.

Ariosa also challenged the Board’s refusal to consider embodiments of the identified prior art reference that Ariosa did not identify or discuss in its Petition or in its supporting declarations. The Federal Circuit determined, however, that the Board did not err in refusing to consider previously unidentified portions of the prior art reference. The Court cited the governing regulation requiring that a Petition must identify “[t]he supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). The Court noted that the Board “may exclude or give no weight to the evidence where a party has failed to state its relevance or identify specific portions of the evidence that support the challenge.”

The Federal Circuit explicitly stated it was not directing the Board to take new evidence or, even, to accept new briefing. Rather, the Court left it to the Board to determine what remand proceedings are appropriate.

While the Petitioner ultimately obtained a limited remand, the case serves as a reminder that it is important to include anything you expect you will need to rely on in your petition and the declaration(s) supporting the petition.