Google instituted inter-partes review at the US Patent Trial and Appeal Board (PTAB) over Intellectual Ventures’s patent, asserting its obviousness in light of another patent owned by Apple, but the board issued a mixed final determination, upholding some of the patent’s claims, while invalidating others.
In its 10 July decision, the Federal Circuit reversed the PTAB’s decision to uphold claims 1-3, 5, 7-10 and 12-14, arguing that the PTAB had “failed to adequately explain its contrary finding”.
“In several recent decisions, we have explained what the [PTAB] must do to permit meaningful judicial review of its final written decisions. In particular, the [PTAB] ‘must make the necessary findings and have an adequate evidentiary basis for its findings’ and ‘must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.”
“In the anticipation findings and obviousness determinations relevant here, the [PTAB] failed to comport with these principles.”
The Federal Circuit, however, upheld the PTAB’s anticipation and obviousness determinations on claims 19-22 and 24-30, describing Intellectual Ventures’s appeal arguments as “unpersuasive”.