CAFC reverses PTAB for lack of substantial evidence in Chudik “Glenoid Implant" case
The CAFC reversed PTAB in the Chudik case, 2016-1817.
Legal standard:
Anticipation is a question of fact we review for substantial
evidence. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1341 (Fed. Cir. 2016). Substantial evidence
is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Universal
Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951).
“Where two different conclusions may be warranted based
on the evidence of record, the Board’s decision to favor one
conclusion over the other is the type of decision that must
be sustained by this court as supported by substantial
evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960,
970 (Fed. Cir. 2007). Though our review of an anticipation
finding is deferential, we have not hesitated to reverse
the Board when substantial evidence does not
support its findings. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., __ F.3d __, 2017 WL 977034 (Fed
Cir. Mar. 14, 2017); In re Skvorecz, 580 F.3d 1262, 1267–
68 (Fed. Cir. 2009).
As to the Rambert reference:
Prior art that
“must be distorted from its obvious design” does not
anticipate a new invention. Wells, 53 F.2d at 539; see also
Topliff, 145 U.S. at 161 (prior art that must be modified
“to accomplish the function performed by the patent in
question” does not anticipate).4 Neither the Examiner nor
the Board described how the protruding surface of Rambert’s
element 27b is capable of engaging the surface of
the glenoid cavity without removing element 27a, i.e.,
tearing the invention apart. Therefore, substantial evidence
does not support the Board’s anticipation finding
based on Rambert.
As to the Bouttens reference:
The Board’s determination of anticipation was erroneous
because the Board failed to describe how a user
could rotate Bouttens without modification while continuing
“to accomplish the function performed by” the ’631
application. Topliff, 145 U.S. at 161. We therefore reverse
the Board’s anticipation finding as not supported by
substantial evidence. We need not resolve Mr. Chudik’s
second argument about whether the Examiner correctly
construed “articulating surface.”
The outcome:
Substantial evidence does not support the Board’s determination
that Rambert or Bouttens anticipate claims
1, 15, 18, or 33–40 of the ’631 application. We reverse the
Board’s rejection of those claims.
The LEXIS citation for the case is 2017 U.S. App. LEXIS 5267 .
Headnote 1: Anticipation is a question of fact that the United States Court of Appeals for the Federal Circuit reviews for substantial evidence. Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. Where two different conclusions may be warranted based on the evidence of record, the Patent Trial and Appeal Boards decision to favor one conclusion over the other is the type of decision that must be sustained by the Federal Circuit as supported by substantial evidence. Although the court's review of an anticipation finding is deferential, the court has not hesitated to reverse the Board when substantial evidence does not support its findings. [with the CAFC referencing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., F.3d , 2017 U.S. App. LEXIS 4416, 2017 WL 977034 (Fed Cir. Mar. 14, 2017)]
Headnote 2: A patent claim is invalid for anticipation under 35 U.S.C.S. § 102 when a prior art reference describes each and every claim limitation and enables one of skill in the art to practice an embodiment of the claimed invention without undue experimentation. Simply put, an anticipated invention is not new. By contrast, a prior art reference that must be distorted from its obvious design does not anticipate a patent claim. In other words, a prior art reference anticipates a claim only if it discloses all the elements in the same form and order as in the claim.
The citation for the first part of headnote 2 is ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012).
Legal standard:
Anticipation is a question of fact we review for substantial
evidence. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1341 (Fed. Cir. 2016). Substantial evidence
is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Universal
Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951).
“Where two different conclusions may be warranted based
on the evidence of record, the Board’s decision to favor one
conclusion over the other is the type of decision that must
be sustained by this court as supported by substantial
evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960,
970 (Fed. Cir. 2007). Though our review of an anticipation
finding is deferential, we have not hesitated to reverse
the Board when substantial evidence does not
support its findings. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., __ F.3d __, 2017 WL 977034 (Fed
Cir. Mar. 14, 2017); In re Skvorecz, 580 F.3d 1262, 1267–
68 (Fed. Cir. 2009).
As to the Rambert reference:
Prior art that
“must be distorted from its obvious design” does not
anticipate a new invention. Wells, 53 F.2d at 539; see also
Topliff, 145 U.S. at 161 (prior art that must be modified
“to accomplish the function performed by the patent in
question” does not anticipate).4 Neither the Examiner nor
the Board described how the protruding surface of Rambert’s
element 27b is capable of engaging the surface of
the glenoid cavity without removing element 27a, i.e.,
tearing the invention apart. Therefore, substantial evidence
does not support the Board’s anticipation finding
based on Rambert.
As to the Bouttens reference:
The Board’s determination of anticipation was erroneous
because the Board failed to describe how a user
could rotate Bouttens without modification while continuing
“to accomplish the function performed by” the ’631
application. Topliff, 145 U.S. at 161. We therefore reverse
the Board’s anticipation finding as not supported by
substantial evidence. We need not resolve Mr. Chudik’s
second argument about whether the Examiner correctly
construed “articulating surface.”
The outcome:
Substantial evidence does not support the Board’s determination
that Rambert or Bouttens anticipate claims
1, 15, 18, or 33–40 of the ’631 application. We reverse the
Board’s rejection of those claims.
The LEXIS citation for the case is 2017 U.S. App. LEXIS 5267 .
Headnote 1: Anticipation is a question of fact that the United States Court of Appeals for the Federal Circuit reviews for substantial evidence. Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. Where two different conclusions may be warranted based on the evidence of record, the Patent Trial and Appeal Boards decision to favor one conclusion over the other is the type of decision that must be sustained by the Federal Circuit as supported by substantial evidence. Although the court's review of an anticipation finding is deferential, the court has not hesitated to reverse the Board when substantial evidence does not support its findings. [with the CAFC referencing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., F.3d , 2017 U.S. App. LEXIS 4416, 2017 WL 977034 (Fed Cir. Mar. 14, 2017)]
Headnote 2: A patent claim is invalid for anticipation under 35 U.S.C.S. § 102 when a prior art reference describes each and every claim limitation and enables one of skill in the art to practice an embodiment of the claimed invention without undue experimentation. Simply put, an anticipated invention is not new. By contrast, a prior art reference that must be distorted from its obvious design does not anticipate a patent claim. In other words, a prior art reference anticipates a claim only if it discloses all the elements in the same form and order as in the claim.
The citation for the first part of headnote 2 is ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012).
posted by Lawrence B. Ebert at 9:03 AM
0 Comments:
Post a Comment
<< Home