Monday, July 03, 2017

CAFC in Shinn Fu: an obligation to consider arguments presented to the tribunal

The outcome of Shinn Fu (2017 U.S. App. LEXIS 11787 (July 3, 2017 ) ):

This appeal arises from an inter partes review (“IPR”)
of U.S. Patent No. 6,681,897 (“’897 patent”) in Inter
Partes Review No. IPR2015-00208. In that proceeding,
the Patent Trial and Appeal Board (“Board”) granted the
patent owner’s motion to amend and held the substitute
claims patentable. Because the Board did not properly
consider the arguments petitioner set forth in its opposition
to the patent owner’s motion to amend
, we vacate
and remand.

The issue related to amendments in IPR:

In broad terms, aside from specifying the order in
which to perform the recited steps, these amendments
added human involvement to steps that an apparatus or
other structure could have otherwise performed. Tire
Hanger accompanied these amendments with arguments
in favor of patentability for the newly presented claims.
Specifically, it presented its arguments in view of the
prior art upon which the USPTO based its institution
decision and recently discovered prior art references not
of record. J.A. 152–63. Shinn Fu opposed and presented
arguments of unpatentability with regard to the references
Tire Hanger identified in its motion and two additional
references: U.S. Patent No. 4,976,336 (“Curran”)
and U.S. Patent No. 4,650,144 (“Conrad”). J.A. 170–94.
After the parties presented oral argument, the Board
concluded that the amended claims were patentable in
light of the prior art of record and granted Tire Hanger’s
motion to amend. J.A. 27. It reached this conclusion after
characterizing the focus of the parties’ arguments as
being limited only to the Komorita, Heidle, and Conrad
references. J.A. 20. Shinn Fu timely appealed. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (2012).

The principal issue on appeal is whether the Board
erred by not adequately addressing Shinn Fu’s arguments
in opposition to Tire Hanger’s motion to amend. We
review the Board’s IPR decisions to ensure that they are
not “arbitrary, capricious, an abuse of discretion, . . .
otherwise not in accordance with law . . . [or] unsupported
by substantial evidence. . . .” 5 U.S.C. § 706(2)(A), (E).

More specifically

Throughout its analysis, Shinn Fu described various
prior art references and, more importantly here, the
particular manner in which to combine them. Specifically,
the combinations Shinn Fu proposed, including the combination
of Conrad and Curran that Shinn Fu emphasizes
on appeal to this court, involve modifying the prior art
references by adding features from particular references
together. See, e.g., J.A. 180 (describing why one of ordinary
skill would have taken the tire hangers disclosed in
the Conrad, Marion, and Wuethrich references and attached
them to a vehicle lift disclosed in Curran or
Heidle); J.A. 183 (coupling Conrad’s tire hanger to the
Curran lift).1 Furthermore, Shinn Fu provided the specific
motivation to combine by adding these features together.
See J.A. 182 (explaining why one of ordinary skill in the
art would have coupled the Conrad tire hanger to a lift);
see also J.A. 181 (discussing OSHA and why one of ordinary
skill would be motivated to prevent bending over
while holding a tire); J.A. 184 (same).
In contrast, the Board addressed the prior art references
by removing elements from individual references to
achieve the resulting combination and found no motivation
to combine the references in this manner.2 See, e.g.,
J.A. 24–25 (“Thus, absent evidence to the contrary, we are

not persuaded that a skilled artisan would have contemplated
gutting Komorita’s cradle structure in favor of a
simpler hanger structure where doing so would have led to
the loss of the very benefits on which Komorita is premised.”)
(emphasis added); id. at 24 (“The ability of Komorita’s
tire holder to retain multiple vehicle parts and to
self-collapse flat with the floor would be lost if the cradlelike
structure was replaced with a simple tire hanger.”)
(emphasis added). This analysis differs substantively
from the additive approach Shinn Fu provided in its
opposition to Tire Hanger’s motion to amend. Yet the
Board largely engaged in this subtractive analysis while
ignoring Shinn Fu’s additive combination of the Curran,
Conrad, Komorita/Heidle references.3 See J.A. 20 (declaring
in its Final Written Decision that the focus of the
parties’ arguments merely “boils down” to the Komorita,
Heidle, and Conrad references). And it did so even after
describing Shinn Fu’s proposed combination as “the
centerpiece of [its] argument.” See J.A. 290 ll. 1–13 (oral
argument transcript).

The Board has an obligation to consider arguments
presented to it:

Because the Board did not provide any analysis with
regard to the manner in which Shinn Fun proposed its
key obviousness combination, we have no meaningful way
to review the Board’s patentability determination in light
of Shinn Fu’s arguments. See Pers. Web Techs., LLC v.
Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (concluding
that the Board provided an inadequate analysis to provide
meaningful appellate review); In re Nuvasive, Inc., 842
F.3d 1376, 1384–85 (Fed. Cir. 2016) (remanding for
failure to articulate a motivation to combine).
To be clear, the Board’s error here does not stem from
its disregard for the teachings of any particular reference.
As Tire Hanger correctly observes, the law does not
require that the Board address every conceivable combination
of prior art discussed throughout an IPR proceeding,
no matter how duplicative the other references are.
Appellee’s Br. 29–30. The Board does have an obligation,
however, to address the arguments that the parties
present to it
—here, represented by the manner in which
Shinn Fu argued the Curran-Conrad combination in
opposition to Tire Hanger’s motion to amend. It simply
did not meet its obligation here. Accordingly, we vacate
the Board’s Final Written Decision and remand for it to
address Shinn Fu’s arguments in the first instance.


See also Cartelli, 2010 U.S. App. Vet. Claims LEXIS 239 : Consequently, the Board has not complied with its legal obligation to address all arguments raised by the claimant. Robinson, supra.

Mitchell, 295 Fed. Appx. 799; 2008 U.S. App. LEXIS 21476 : So long as "[t]he record makes clear that the sentencing judge listened to each argument," "considered the supporting evidence," was "fully aware" of the defendant's circumstances and "took them into account" in sentencing him, the sentencing court has done its duty. Rita v. United States, 551 U.S. 338, 127 S. Ct. 2456, 2469, 168 L. Ed. 2d 203 (2007).


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