Judicial Review: The PTAB Must Offer Reasonably Discernible Logic

| Christopher L. LewisDaniel P. Hughes


Before Prost, Reyna, and Stark. Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB has an obligation to ensure that its logic is reasonably discernible from the record.

Weber petitioned for inter partes review of Provisur’s patent, arguing that the claims were invalid as obvious over multiple references.  With its reply brief, Weber also submitted evidence that the digital camera disclosed in Weber’s references was the same type of camera claimed by Provisur’ patent.

Provisur asked the Board to exclude this evidence as untimely.  In the Final Written Decision, the PTAB found that Weber’s reply evidence was properly submitted rebuttal evidence and found that the digital camera limitation was disclosed by Weber’s references.  The PTAB also found that Provisur did not dispute that Weber’s references taught all the other limitations of the claims.  Rather than providing its own analysis on these limitations, however, the PTAB simply adopted Weber’s arguments and evidence as its own.

On appeal, the Federal Circuit found that Provisur had argued that the references did not teach an additional limitation of the independent claims and that the PTAB erred by not addressing Provisur’s arguments about it. The Federal Circuit also found that the PTAB’s adoption of Weber’s arguments and evidence precluded the Federal Circuit from engaging in meaningful appellate review.  However, the Federal Circuit affirmed the PTAB’s decision that Weber’s reply evidence was properly submitted, explaining that the reply evidence did not change Weber’s invalidity theories or fill any holes in Weber’s petition.  The Federal Circuit then remanded back to the PTAB for the PTAB to consider Provisur’s remaining arguments.

Editor: Paul Stewart