The Federal Circuit’s precedential decision in In re: Warsaw Orthopedic, Inc., No. 2015-1050, 2015-1058 (Fed. Cir. Aug. 9, 2016), highlights recurring themes in appeals of PTAB IPR decisions. On one hand, the Federal Circuit is reluctant to overturn a PTAB decision canceling claims for obviousness based on Patent Owner’s assertions that the PTAB failed to properly weigh certain facts found in reaching its decision. On the other hand, the Federal Circuit will not hesitate to vacate and remand PTAB decisions where the PTAB does not adequately describe its reasons for concluding a claimed invention is obvious.
The PTAB cancelled claims 1-8 and 17-23 of U.S. Patent No. 8,251,997 for being obvious in view of various prior art references. NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00208 and NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206. The claims generally relate to methods of gaining access to, and inserting an implant between, adjacent vertebrae. Claims 1-8 required the implant to have a length “sized to occupy substantially the full transverse width of the vertebral bodies of the two adjacent vertebrae… being greater than the depth of the disc space,…[and] being greater than the maximum height of said implant.” In its final written decision, the PTAB focused on the cited art’s description of implants “generally shaped and sized to conform to the disc space,” determining that it would have been obvious that such an implant would have the size features recited in the claims. On appeal, the Patent Owner argued that the prior art description does not reveal the implant’s dimensions, and other descriptions in the prior art require the implant to be substantially shorter than the full width of the vertebrae, thereby teaching away from the invention.
[Patent Owner’s] arguments contest the weight the PTAB afforded to the record evidence, but we may not reweigh facts already considered by the PTAB.
The Federal Circuit determined that the PTAB’s finding was supported by substantial evidence, which “is something less than the weight of the evidence but more than a mere scintilla of evidence.” Here, “[t]he evidence cited and the rationale provided by the PTAB comports with what our precedent demands.” A finding of obviousness does not require a cited reference to expressly disclose each limitation, and other teachings in the reference were not sufficient to teach away from the claimed invention. In this regard, the court noted that “Warsaw’s argument asks the court to elevate one aspect of Brantigan…over another” contrary to the PTAB’s findings, and “[w]e may not reweigh this evidence on appeal.”
The court’s decision offers the Patent Owner a glimmer of hope. The court vacated the portion of the decision cancelling claims 17-23, holding that the PTAB did not adequately describe its reasons for concluding that the claimed subject matter is obvious. Regarding a feature of claim 17, the PTAB provided only a single sentence stating that a cited reference “appears to disclose” the feature. Consistent with previous decisions discussed in this blog, the court explained that the PTAB must articulate “logical and rational” reasons underlying its decisions; conclusory assertions are not sufficient. This portion of the decision was remanded.
What can Patent Owners take away from this decision? Under the current standard of review, the Federal Circuit is unlikely to be swayed by arguments that, in essence, contest the weight the PTAB affords evidence. On appeal, the court will review factual findings supporting an obviousness determination for substantial evidence, which is a relatively easy threshold for the PTAB to meet, and the court will not reweigh facts already considered by the PTAB. The substantial evidence standard may soon be reviewed if the Supreme Court grants a petition for certiorari recently filed by Merck & Cie. The corresponding Federal Circuit decision was discussed by this blog here. In the meantime, a more successful challenge may lie in establishing that the final written decision fails articulate adequate reasoning behind the PTAB’s conclusions, which can lead to remand or even reversal.