Rules Clarified for Determining Obviousness in PTAB Proceedings

September 24, 2013


What This Means To You

  • Even when the examiner and the Patent Trial and Appeal Board (“the Board”) agree that a patented claim is obvious, a patent owner’s position in subsequent proceedings can be strengthened by persuading the Board to adopt a new reason for combining the cited references.
  • When commenting on technology covered by patents licensed from a competitor, a licensee should be careful to avoid making statements that might strengthen the licensor’s argument that the patents are nonobvious.

Overview

In Rambus Inc. v. Teresa Stanek Rea, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) clarified the rules for determining whether a claimed invention is obvious in proceedings before the Board at the U.S. Patent and Trademark Office (USPTO).

The Federal Circuit found the Board correctly construed the claims but vacated the Board’s finding of obviousness, holding that the Board committed a number of legal errors.

Case Background

After the International Trade Commission ruled the graphics chips owned by global technology company NVIDIA infringed one of Rambus’ patents, NVIDIA licensed the patent from Rambus and then initiated reexamination proceedings against it. During reexamination, the examiner found the patented claims obvious over a combination of prior art references. On appeal, the Board affirmed the examiner’s finding of obviousness, but adopted a new reason to combine the prior art references that differed from the reason articulated by the examiner. Rambus appealed the USPTO’s claim construction and finding of obviousness to the Federal Circuit.

Decision Analysis

The Federal Circuit affirmed the USPTO’s claim construction, but vacated the finding of obviousness in view of the Board’s three legal errors.

First, the Board impermissibly shifted the burden of showing nonobviousness to Rambus. (In proceedings before the Board, the USPTO retains the burden of showing that the claimed invention is obvious.) Second, the Board adopted a new reason to combine the prior art references. By doing so, the Board impermissibly relied on new facts and rationales not previously raised to Rambus by the examiner, thereby depriving Rambus of a fair opportunity to respond. Third, the Board’s consideration of objective evidence of nonobviousness was flawed, because it took an overly strict view of the requirement that objective evidence have a nexus to the claims.

Takeaways

When appealing an examiner’s finding of obviousness to the Board during reexamination, a patent owner should consider attacking the examiner’s rationale for the determination of obviousness to persuade the Board to adopt a new rationale (e.g., a new reason to combine the references). The patent owner can then challenge the rationale adopted by the Board in subsequent proceedings.

Recent decisions by the Federal Circuit appear to place an increasing emphasis on the importance of objective evidence of nonobviousness. In Rambus v. Rea, the objective evidence of nonobviousness included a competitor’s praise for the Rambus technology. When commenting on technology covered by patents licensed from a competitor, a licensee should be careful to avoid making statements that might strengthen the licensor’s argument that the patents are nonobvious.