Friday, June 25, 2021

3M loses appeal at CAFC; PTAB need not “play archeologist with the record”

The outcome:

For the foregoing reasons, we affirm the Board’s decision rejecting 3M’s obviousness challenge to dependent claims 3 and 4 of the ’056 patent.

The problem for 3M:

We agree with the Board that the Request for Rehearing contained the first clear articulation of 3M’s argument regarding why the 220 psi “minimum” taught by Braud did not pose an obstacle to a finding that claims 3 and 4 were obvious under 3M’s Ground 4. As discussed above, the arguments about routine optimization in 3M’s Petition and Petitioner Reply are skeletal at best, and these filings do not mention the 220 psi “minimum” teaching of Braud at all. Thus, we are not persuaded that the Board abused its discretion when it concluded that 3M’s arguments were present in the briefing prior to the Final Written Decision only in the form of improper incorporation by reference to Dr. Prud’homme’s testimony.

The CAFC noted

The Board’s rules concerning trial practice are set forth in 37 C.F.R. Chapter 1, Subchapter A, Part 42 (Trial Practice Before the Patent Trial and Appeal Board). Section 42.6 of the rules concerning Filing of Documents, regarding incorporation by reference, provides that “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). When promulgating § 42.6(a)(3), the Patent and Trademark Office explained that the rule “minimizes the chance that an argument would be overlooked and eliminates abuses that arise from incorporation and combination,” Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612, 48,617 (Dep’t of Commerce Aug. 14, 2012), and noted that without the rule, the Board would be forced to “play archeologist with the record” for arguments that might have been made outside the parties’ briefing, id. (citing DeSilva v. DiLeonardi, 181 F. 3d 865, 866–67 (7th Cir. 1999)).
The Board stated that “Petitioner’s argument on rehearing amounts to a contention that we overlooked Petitioner’s invitation to formulate arguments on their behalf, search the record for pertinent facts, and inject our own reasoning. That is not our role.” Rehearing Decision at *3.


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