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Obviousness at the Federal Circuit

In a recent Federal Circuit decision, In re NuVasive, Inc. (Fed. Cir. 2016), the Court remanded a Patent Trial and Appeal Board (“PTAB”) decision because the PTAB invalidated claims in a patent without articulating a reason why the cited prior art references would be obvious to combine.

Under 35 U.S.C. §103, a claim is invalid if the differences between the prior art and the claim could have been obvious to a person having ordinary skill in the art (“PHOSITA”) considering the issue at the time the invention was made. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the U.S. Supreme Court held that the motivation to combine references need not be found expressly in the prior art itself, but may be explained by a fact finder using common sense.  The KSR Court additionally wrote that it can be important to identify a reason that would have prompted a person having ordinary skill in the art to combine the elements in the way the claimed new invention does.

According to the Court in NuVasive, “the PTAB failed to explain the reason why a PHOSITA would have been motivated to modify [the prior art]” and the Court could not “’reasonably discern’ the PTAB’s reasoning as to motivation to combine…”  This case illustrates that ensuring the Patent Office clearly articulates a reason to combine prior art references can be an effective tool for rebutting obviousness.

The opinion can be found here: In re NuVasive, Inc. (Fed. Cir. 2016).

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