Docket No. 2016-2233 (IPR2015-00150)
WALLACH, TARANTO, STOLL
May 11, 2017
Brief Summary: Board FWD of obviousness vacated and remanded because it failed to “set forth its reasoning in sufficient detail”.
Summary: Rovalma appealed PTAB IPR Final Written Decision finding the claims of US 8,557,056 relating to “methods for making steels with certain desired thermal conductivities” invalid as obvious. The Board instituted review based on Bohler’s proposed claim construction but adopted Rovalma’s construction in the FWD. The Board also found obviousness based on Rovalma’s own submissions; Bohler did not submit arguments based on Rovalma’s construction. The FC panel concluded “the Board set forth its reasoning in sufficient detail for us to determine what inferences it drew from Rovalma’s submissions” (SEC v. Chenery Corp., US 1943; Personal Web, FC 2017; Inre NuVasive, FC 2016; Consolidated Edison, US 1938), and it therefore could not “determine whether the Board’s decision was substantively supported and procedurally proper.” The ‘056 claims are to processes but in its Petition, “Bohler argued the claims should be construed to cover the specific chemical compositions described in the specification, whether or not created according to the process steps” and argued for obviousness of those compositions but not the steps of the claimed process. The Board instituted review and Rovalma’s Patent Owner Response “argued that the claims should be construed to require performance of the processes” and “submitted additional evidence and argument regarding thermoprocessing.” At Oral Argument, “the Board asked Rovalma to discuss the notion of whether it would have been obvious to create steel with the claimed thermal conductivities in light of the prior art references advanced by Bohler because: (a) those references disclosed the chemical compositions…and (b) Rovalma’s submissions showed that a person of ordinary skill in the art would have known how to optimize those compositions to achieve the desired properties”. In its finding of obviousness, “[t]he Board relied on Rovalma’s own submissions for key findings about what a relevant skilled artisan would have taken from the Bohelr-asserted prior art” (e.g., “would have ‘inherently completed the ‘selecting’ steps”). The FC opinion explained that SCOTUS “has recognized the importance of clarity with respect to obviousness determinations” and the “analysis should be made explicit” (KSR, US 2007), noting “that the amount of explanation needed varies from case to case, depending on the complexity of the matter” (Personal Web, FC 2017; Ariosa, FC 2015; In re Lee, FC 2002). Here, the FC panel found the Board did not, e.g., “sufficiently lay out the basis for its implicit findings regarding” the claims other than the “providing” steps, or “adequately explain why a person of ordinary skill in the art would have been motivated to increased the thermal conductivities of the steels disclosed in the prior art”. Rovalma also argued the Board “exceeded its statutory authority” by relying on Rovalma’s own submissions in determining obviousness, relying on In re Magnum Oils (FC 2016) which the FC panel explained is a “burden-shifting” case (the Board is not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner”) and not applicable to this point. It also explained that Rovalma had not identified anything in the statute forbidding the Board from using its own submission against it (Adv. Magnetic, FC 2010). The FC panel also noted it was unclear whether Bohler committed a forfeiture by not presenting arguments under Rovalma’s proposed construction, or whether Rovalma preserved a forfeiture contention. And it found it could not determine how the Board reached its obviousness conclusions and therefore whether the Board complied with the notice / adequate opportunity to be heard requirements of an IPR. It therefore vacated and remanded the decision.