Thursday, December 28, 2017

CAFC vacates PTAB in Takeda v. Array

The one ground for the decision that was explained was erroneous, and alternate grounds were not explained:

Typically, “[t]he agency
tribunal must make findings of relevant facts, and present
its reasoning in sufficient detail that the court may
conduct meaningful review of the agency action.” In re
Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017) (internal
quotation marks and citation omitted). Here, the PTAB
did not provide an opinion as to any of Array’s alternative
grounds for affirmance, and therefore did not make factual
findings necessary for this court to conducting meaningful
review. See generally Array, 2016 WL 8999741. In
such a situation, where the PTAB’s “action is potentially
lawful but insufficiently or inappropriately explained, we
have consistently vacated and remanded for further
proceedings.” Van Os, 844 F.3d at 1362 (internal quotation
marks and citation omitted); see SEC v. Chenery
Corp., 318 U.S. 80, 94 (1943) (“[We] cannot exercise [our]
duty of review unless [we] are advised of the considerations
underlying the action under review.”); NuVasive,
842 F.3d at 1385 (stating that when the PTAB fails to
articulate its rationale, “judicial review cannot meaningfully
be achieved” (internal quotation marks, brackets,
and citation omitted)). Vacating and remanding is appropriate
here, where the PTAB provided only an erroneous
basis to reject the Asserted Claims and did not make
factual findings relevant to alternate grounds for rejection.

The one ground relied upon was erroneous:

The PTAB, after finding that proposed substitute
claim 18 lacked written description support pursuant to
37 C.F.R. § 42.121(b),3 Array, 2016 WL 8999741, at
*17−19, the PTAB explained that “proposed claims 19–29
depend from independent claim 18” and, thus, “are also
unsupported for at least the same reasons,” id. at *19.
This was error, as both parties acknowledge. See Appellant’s
Br. 13 (arguing that the PTAB’s finding was based
on “an erroneous premise”); Appellee’s Br. 15 (stating “the
rationale articulated by the [PTAB] was misplaced” and
characterizing the error as a “harmless misstatement”).
Although the PTAB is correct that proposed claims 19–25
depend from proposed claim 18, the Asserted Claims do
not. Compare J.A. 312–13 (claims 19–25), with J.A. 314–
17 (Asserted Claims). Instead, proposed claims 26 and 28
are independent claims, from which proposed claims 27
and 29 depend, respectively. See J.A. 314–17. Accordingly,
the PTAB’s determination that the Asserted Claims
lack written description support is based on an error and
is not supported by substantial evidence.


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