Docket No. 2016-2747 (IPR2015-01034)
PROST, WALLACH, TARANTO
October 12, 2017
Brief summary: Claim construction and obviousness determination in PTAB FWD regarding Ignite’s patent affirmed as supported by substantial evidence.
Summary: Ignite appealed PTAB final written decision following IPR finding certain claims of US 8,864,878 relating “to a moveable trigger/seal mechanism for a beverage container” anticipated by “Oesterling” (WO 2005/115204 A1) and another claim obvious in view of the same reference. “Each of the Asserted Claims teaches a seal arm or trigger member ‘connected’ to the lid housing or a drink aperture (‘the connected limitation’), either expressly or through its attendant independent claim.” Ignite argued the PTAB erred in construing the connected limitation and in finding claim 7 obvious. The FC panel explained that it “review[s] the PTAB’s factual findings for substantial evidence and its legal conclusion de novo” (Redline, FC 2015), substantial evidence being “something less than the weight of the evidence but more than a mere scintilla” (In re Nuvasive, FC 2016). And “[i]f two ‘inconsistent conclusion may reasonably be drawn from the evidence in record, [the PTAB]’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence” (In re Cree, FC 2016). The FC panel also explained the broadest reasonable construction standard of claim construction (37 CFR § 42.100(b) (2016)) and that “[a] patent’s specification, together with its prosecution history (Ormco, FC 2007), constitutes intrinsic evidence to which the PTAB gives priority when it construes the claims” (In re Packard, FC 2014; Microsoft, FC 2015 (if intrinsic evidence is unclear, PTAB may rely on extrinsic evidence); In re Cuozzo, FC 2015/US 2016 (underlying factual determinations concerning extrinsic evidence is reviewed for substantial evidence, ultimate construction is reviewed de novo)). The PTAB determined the connected limitation “includes non-permanent connections” and, based on the intrinsic evidence alone (as such, it “need not consider…th[e extrinsic] evidence” (Microsoft)), the FC panel agreed (e.g., “The specification’s use of ‘when’ indicates that the trigger member is not always connected to the lid housing….”) The FC panel also found that substantial evidence (e.g., expert testimony) supports the PTO’s obviousness conclusion, even though its “analysis primarily consists of summaries and rejections of Ignite’s arguments, which is usually insufficient” (Icon Health, FC 2017) because it “also explained that if found CamelBak’s arguments and supporting evidence more persuasive” (“undoubtebly, it would be preferable for the PTAB to provide its own reasoned explanation”). Further, the FC panel explained, “explaining why a party’s arguments are not persuasive does not constitute improper burden shifting.” The FC panel therefore affirmed the PTAB’s decision.