Friday, June 16, 2017

CAFC discusses motivation to combine; copying from a party's brief in Outdry

The appellant Outdry lost at the CAFC:

Outdry Technologies Corp. (“Outdry”) appeals from
the Patent Trial and Appeal Board’s (“Board”) inter
partes review decision holding that claims 1–15 of U.S.
Patent No. 6,855,171 (“the ’171 patent,” directed to
methods of waterproofing leather) would have been
obvious over a combination of prior art. For the reasons
discussed below, we affirm.

Of the law:

We review the Board’s legal determination of obviousness
de novo and its factual findings for substantial
evidence. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015). In IPR proceedings, the Board
gives claims their broadest reasonable interpretation
(“BRI”) consistent with the specification. In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015).
We review claim construction de novo except for subsidiary
fact findings, which we review for substantial evidence.
Id. at 1280.

Preamble significance arose:

Outdry also argues that the “process for waterproofing
leather” limitation is not disclosed in Thornton. This
language is in the preamble of the claim. And like most
preambles is simply a statement of intended use, not a
separate claim limitation. See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339,
1345 (Fed. Cir. 2003) (“[A] preamble simply stating the
intended use or purpose of the invention will usually not
limit the scope of the claim, unless the preamble provides
antecedents for ensuing claim terms and limits the claim
accordingly.”). Satisfaction of the claimed steps necessarily
results in satisfying a “process for waterproofing leather.”
This is not a separate limitation that must be
disclosed in Thornton in order to uphold the Board’s
obviousness determination.

Of motivation:

Outdry argues the Board failed to adequately articulate
why a person of ordinary skill in the art would have
been motivated to combine Thornton’s process with Scott
and Hayton’s disclosure of the density and size of the glue


The Board’s motivation to combine finding is reviewed
for substantial evidence. Belden, 805 F.3d at 1073. The
Board must support its finding that there would have
been a motivation to combine with a reasoned explanation
to enable our review for substantial evidence. In re
NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). This
necessitates that the Board “not only assure that the
requisite findings are made, based on evidence of record,
but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee,
277 F.3d 1338, 1344 (Fed. Cir. 2002). Under this framework
“we will uphold a decision of less than ideal clarity if
the agency’s path may reasonably be discerned,” but “we
may not supply a reasoned basis for the agency’s action
that the agency itself has not given.” Bowman Transp.,
Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285–86
We have criticized the Board for failing to adequately
explain its findings. Missing from those Board decisions
were citations to evidence, reasoned explanations, or
explicit findings necessary for us to review for substantial

For example, in Rovalma, we vacated the
Board’s obviousness decision where “the Board did not
cite any evidence, either in the asserted prior-art references
or elsewhere in the record, with sufficient specificity
for us to determine whether a person of ordinary skill in
the art would have been so motivated.” Rovalma, S.A. v.
Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1025–
26 (Fed. Cir. 2017). In Van Os, we held the Board’s
finding that it would have been intuitive to combine prior
art lacked the requisite reasoning because “[a]bsent some
articulated rationale, a finding that a combination of prior
art would have been ‘common sense’ or ‘intuitive’ is no
different than merely stating the combination ‘would have
been obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed.
Cir. 2017); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d
1355, 1362 (Fed. Cir. 2016) (“[R]eferences to ‘common
sense’—whether to supply a motivation to combine or a
missing limitation—cannot be used as a wholesale substitute
for reasoned analysis and evidentiary support . . . .”);
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
(Fed. Cir. 2016) (vacating the Board’s decision where the
Board summarized the parties’ arguments and rejected
the arguments of one party but did “not explain why it
accept[ed] the remaining arguments as its own analysis”).
In NuVasive, we vacated the Board’s decision because the
Board “never actually made an explanation-supported
finding” that a person of ordinary skill in the art would
have been motivated to combine the prior art. 842 F.3d
at 1384. In Icon Health, we held that the Board failed to
make requisite fact findings and provide an adequate
explanation to support its obviousness determination
where it merely agreed with arguments made in the
petitioner’s brief for which no evidence was cited. Icon
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1042–48 (Fed. Cir. 2017) (holding that attorney argument
is not evidence and the Board’s adoption of petitioner’s
brief did not “transform [the petitioner’s] attorney argument
into factual findings or supply the requisite explanation
that must accompany such findings”).

[ BUT ]

The Board’s decision here does not suffer from similar
deficiencies. The Board clearly articulated Geox’s arguments
for why a person of ordinary skill in the art would
have been motivated to modify Thornton’s process of
adhering dots to create waterproof and breathable leather
with Hayton and Scott’s disclosed glue patterns.

The Board recited Geox’s argument that “the
discontinuous glue pattern is a matter of optimization as
taught by Scott, which teaches optimizing the amount of
glue necessary to provide sufficient adhesion to bond the
two layers while minimizing the area of blocked micropores.”

It explained Geox’s position that Scott and Hayton are from
the same field of endeavor and that both disclose fabrics
that are water impermeable and vapor permeable.

It recited Geox’s
argument for a motivation to combine based on this
evidence: “Scott provides a reason for optimizing the
amount of adhesive that Thornton and Hayton teach to
apply to a semi-permeable membrane, which is to provide
good adhesion while maintaining vapor permeability.”

It then expressly
adopted Geox’s rationale and found that this provided a
motivation to combine Thornton with Scott and Hayton.
The Board found that Geox “provided a rational underpinning
for combining the disclosures of Scott and Hayton,
which provide guidance for the density and size of
adhesive dots to adhere a semi-permeable membrane to a
porous layer.”

The Board engaged in reasoned
decisionmaking and sufficiently articulated its analysis in
its opinion to permit our review. It contains a clear and
thorough analysis.

The CAFC does not conceal that PTAB basically adopted the
position of a party.

In fact, the CAFC then stated:

The Board’s reliance on Geox’s arguments does not
undermine its otherwise adequate explanation for finding
a motivation to combine. The Board did not reject Outdry’s
positions without clarity as to why it found Geox’s
arguments persuasive. It did not incorporate Geox’s
petition by reference, leaving uncertainty as to which
positions the Board was adopting as its own. Nor is this a
situation where “a particular fact might be found somewhere
amidst the evidence submitted by the parties,
without attention being called to it,” such that it is unclear
what evidence the Board may or may not have relied
on to find a motivation to combine. See Rovalma, 856
F.3d at 1029. The Board is “permitted to credit a party’s
argument as part of its reasoned explanation of its factual
; it simply must “explain why it accepts the
prevailing argument.” Icon, 849 F.3d at 1047 (alteration
omitted). In this case, the Board articulated Geox’s
arguments with evidentiary support and expressly adopted
them to find there would have been a motivation to
combine. The Board sufficiently explained why it found
that Geox’s arguments supported finding a motivation to

Also on motivation:

The Board was not required to limit its motivation to combine
inquiry to the problem faced by the inventor of the
’171 patent. The Supreme Court expressly rejected this
argument in KSR: “the problem motivating the patentee
may be only one of many addressed by the patent’s subject
matter.” KSR Int’l Co v. Teleflex Inc., 550 U.S. 398,
420 (2007). Outdry appears to interpret KSR’s use of the
phrase “addressed by the patent” to suggest the problem
must be identified within the patent. Neither KSR nor
our post-KSR precedent limits the motivation to combine
inquiry in this manner. See, e.g., Par Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014) (“Par’s
argument, however, ignores that we are not limited to the
same motivation that may have motivated the inventors.”);
Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362,
1368 (Fed. Cir. 2012) (“We have repeatedly held that the
motivation to modify a prior art reference to arrive at the
claimed invention need not be the same motivation that
the patentee had.”). “The obviousness analysis cannot be
confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content
of issued patents.” KSR, 550 U.S. at 419. Any motivation
to combine references, whether articulated in the references
themselves or supported by evidence of the
knowledge of a skilled artisan, is sufficient to combine
those references to arrive at the claimed process. The
motivation supported by the record and found by the
Board need not be the same motivation articulated in the
patent for making the claimed combination. The Board’s
fact finding regarding motivation to combine is supported
by substantial evidence. We see no error in the Board’s
conclusion that the claims would have been obvious to a
skilled artisan based on the facts presented.

A claim at issue

1. A process for waterproofing leather (1), comprising
directly pressing on an internal surface of
the leather (1) at least one semi-permeable membrane
(2) whose surface contacting the leather (1)
is provided with a discontinuous glue pattern to
adhere the leather to the semi-permeable membrane,
wherein the glue pattern is formed of a
multiplicity of dots having a density included between
50 dots/cm2 and 200 dots/cm2.

The Board found U.S. Patent No. 5,244,716
(“Thornton”) discloses all elements of claims 1 and 9
except the density of the dots (claim 1) and the sizes of the
dots (claim 9). Thornton is directed to “waterproof but
breathable articles of clothing” including stockings,
gloves, and hats.

For disclosure of the density and sizes of the dots, the
Board relied on “Coated and Laminated Fabrics” in
Chemistry of the Textiles Industry (“Scott”) and U.S.
Patent No. 6,139,929 (“Hayton”). Scott discloses adhering
a waterproof, vapor permeable membrane to fabric for
rainwear in which there is “sufficient adhesive to bond the
hydrophobic ‘non-stick’ film to a textile fabric, but the
adhesive dot coverage has to be kept low to minimize the
area of blocked micropores.”


"Motivation to combine" is reviewed for substantial evidence.

Of something to think about-->

In Bright v. Westmoreland County, 380 F.3d 729, 731 (CA3 2004), the Third Circuit stated:
Here, however, we are not dealing with findings of fact. Instead, we are confronted
with a District Court opinion that is essentially a verbatim copy of the appellees' proposed opinion.


Judicial opinions are the core work-product of judges. They are much more than findings of fact and
conclusions of law; they constitute the logical and analytical explanations of why a judge arrived
at a specific decision. They are tangible proof to the litigants that the judge actively wrestled
with their claims and arguments and made a scholarly decision based on his or her own reason and logic.
When a court adopts a party's proposed opinion as its own, the court vitiates the vital purposes served by judicial opinions.

Also from a 2011 post on the Volokh Conspiracy about Cojocaru v. British Columbia Women’s Hospital & Health Center —>

Rather, the problem, as the B.C. Court of Appeal panel majority understood it, is that a judge is supposed to “independently and impartially considered the law and the evidence and arrived at his own conclusions on the complex issues before him,” and simply adopting hundreds of paragraphs of a party’s papers casts doubt on that. It’s of course possible, as Prof. Poser suggests, that a judge may well consider the matter thoroughly but think one party’s analysis is precise enough. But the verbatim copying gives reason to doubt that, especially since a party’s analysis — even when generally sound — will almost always be framed in the way that’s most favorable to that party, and will thus very rarely be the way that a neutral arbiter would characterize the matter. (This is also an issue in plagiarism by students, where verbatim copying suggests that the student didn’t fully confront the issue; but that’s only a part of the objection to academic plagiarism.)

Volokh quoted Bill Poser: “Judges, unlike authors of fiction, are not paid to be original. If one party states the facts or the law clearly and accurately, by all means the court should make use of the work that party’s attorneys have already done rather than spending time rephrasing it.”

But, of course, it the facts and law relied upon by the copying judge are NOT accurate, the act of copying is especially pernicious.

Sadly, citations to the Cojocaru appellate decision are likely to fall on deaf ears.

link to Volohk post:


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