Wednesday, August 29, 2018

CAFC vacates PTAB decision in Emerson v. Sipco. An inconsistency issue.

Of the outcome:

Emerson Electric Co. challenged various claims of
SIPCO, LLC’s U.S. Patent No.
8,013,732 in an inter partes review. The
U.S. Patent and Trademark Office’s
Patent Trial and Appeal Board
determined that Emerson
failed to show that certain claims would have
been unpatentable as obvious. Because the Board did not ade-
quately explain its reasoning on a point that was central
to its analysis
and its conclusion on that point was contrary to another Board opinion
on nearly identical facts
we vacate the Board’s determination as to the appealed
claims and remand for further proceedings.

Of note:

The Board came to opposite conclusions on patentability
of these nearly identical claims despite considering
nearly identical evidence in both cases. As discussed
above, the Board found that the differences between the
two patents’ claims and specifications were nonsubstantive.
Both inter partes reviews considered the
same Kahn reference in searching for a motivation to
combine, although we acknowledge that the Greeves
reference was properly raised and considered by the
Board in IPR2016-00984. Dr. Heppe’s declarations were
identical in relevant part regarding motivation to combine.
Compare Decl. of Dr. Heppe, Ex. 1004, Emerson
Elec. Co. v. SIPCO, LLC, IPR2015-01973, J.A. 435–39,
¶¶ 29–32 (P.T.A.B. Sept. 25, 2015), with Decl. of
Dr. Heppe, Ex. 1018, Emerson Elec. Co. v. SIPCO, LLC,
IPR2016-00984, ¶¶ 40–43 (P.T.A.B. Apr. 29, 2016). And,
in IPR2016-00984, the Board found “credible Petitioner’s
arguments and Dr. Heppe’s opinion” that “an advantage
of using wireless . . . networks was to avoid the need for
wires” and that a skilled artisan “would have been motivated
to use a wireless . . . network . . . to enhance flexibility
in rapid deployment and reconfiguration.” IPR2016-
00984 Final Written Decision, 2017 WL 4862106, at *16.
Here, in contrast, the Board considered the same testimony
and came to the opposite conclusion.
Under these circumstances, we conclude that the
Board’s decision in this case does not adequately explain a
key element of its analysis. The decision “does not address,
or at least does not clearly address,” why the
statement in Kahn—that deployment of the packet radio
net should be rapid and convenient—does not provide a
rationale that would have motivated a skilled artisan to
combine the teachings of Kahn and the Admitted Prior
Art. Pers. Web, 848 F.3d at 993. Further, as we have
held, “where a panel simultaneously issues opinions on
the same technical issue between the same parties on the
same record, and reaches opposite results without explanation,
we think the best course is to vacate and remand
these findings for further consideration.” Vicor Corp. v.
SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017).

Of length of PTAB decisions:

Some Board explanations can suffice even if brief, as
when the patent and the art are both clear and readily
understandable. Pers. Web, 848 F.3d at 994. In addition,
“we will uphold a decision of less than ideal clarity if the
agency’s path may reasonably be discerned.” Bowman
Transp., Inc. v. Ark.–Best Freight Sys., Inc., 419 U.S. 281,
286 (1974); see In re NuVasive, Inc., 842 F.3d 1376, 1382–
83 (Fed. Cir. 2016). But, understood in light of our scrutiny
of the patent and the prior art, the Board’s “own
explanation must suffice for us to see that the agency has
done its job and must be capable of being ‘reasonably . . .
discerned’ from a relatively concise [Board] discussion.”
In re NuVasive, 842 F.3d at 1383 (quoting In re Huston,
308 F.3d 1267, 1281 (Fed. Cir. 2002)). Here, the Board
did not explain why an explicit statement in Kahn regarding
a potential motivation to combine was not enough, nor
did it explain how it determined that impermissible
hindsight would be required to conclude that Kahn provided
the requisite motivation to combine, particularly
given its seemingly opposite conclusions in IPR2016-


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