Obviousness In Inter Partes Review Proceedings

Apparently the Patent Trial and Appeal Board ("PTAB", "the Board") loves obviousness. In 2015, nearly two-thirds of claims instituted for inter partes review ("IPR") were based on obviousness grounds,1 as illustrated in Chart 1.

Chart 1

While an IPR petition may be based on either anticipation or obviousness, 35 U.S.C. § 311(b), petitioners pursue obviousness at a much higher rate. And, the institution rate for claims based on grounds of anticipation (46 percent) is lower compared to obviousness (54 percent), as shown in Chart 2. This is unlike district court patent litigation, where a finding of obviousness occurs infrequently.

Chart 2

Although the principles of obviousness are the same as in district court litigation, it is instructive to examine their application by the PTAB given the volume of cases decided in the past three years since inception of IPR under the America Invents Act. Two critical lessons emerge from this analysis:

Lesson 1: Don't stretch an anticipation argument, where an obviousness argument would suffice. Lesson 2: The PTAB's obviousness analysis is exacting. Obviousness Principles

The Patent Act prescribes that claims are not patentable where "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103. The guiding principles for an obviousness analysis are found in well-established precedent, and are articulated in seminal cases such as Graham and KSR,

The Graham Factors

Under Graham, obviousness must be assessed on the basis of factual inquiries regarding (i) the scope and content of the prior art, (ii) differences between the claimed subject matter and the prior art, (iii) the level of skill in the art, and (iv) objective evidence of nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).

Prior Art Must Be Meaningfully Addressed. The PTAB has made clear that, to be successful, petitioners must "meaningfully" address the first two Graham factors: (i) the scope and content of the prior art, and (ii) any differences between the claimed subject matter and the prior art. Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9, slip op. at 23-25 (May 22, 2014). In Google, for example, the PTAB acknowledged that the petitioner provided summaries of the prior art references, and claim charts containing quotations and citations from those references. Id. But the petitioner failed, according to the PTAB, to specify sufficiently where each element of the claim is found and explain the significance of the quotations and citations. Id. The PTAB refused to accept the burden to "sift through the information" to make such a determination and denied institution. Id.

Level of Ordinary Skill in the Art. The level of ordinary skill in the art may be established by factors such as:

"(1) educational level of the inventor; ( 2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field."Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83, slip op. at 34, n. 17 (PTAB Mar. 23, 2014).

To be persuasive before the PTAB, parties should provide detailed support for their positions. See Oracle Corp. v. Thought, Inc., IPR2014-00119, Paper 45, slip op. at 23 (Apr. 23, 2015) (failing to "explain[ ] sufficiently why a graduate degree would be necessary").

Education and Work Experience May be Insufficient. It is not uncommon that educational level and work experience are the only disputed factors. But it may be a mistake to focus on these factors to the exclusion of all others.

The PTAB has observed that "specifying the level of ordinary skill in terms of an academic degree in a field of study and the number of years of practical working experience is generally unhelpful, as a practical matter, because it does not convey whether one with ordinary skill in the art would have been aware of anything specific or particular." Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP, IPR2014-00518, Paper 47, slip op. at 17 (Sep. 17, 2015). Accordingly, patent owners and petitioners should consider presenting "evidence regarding what a person of ordinary skill in the art would have known." Digital Ally, Inc. v. Utility Assocs., Inc., IPR2014-00725, Paper 29, slip op. at 9 (PTAB Nov. 16, 2015).

Skill Level Reflected by Prior Art. "The level of ordinary skill in the art usually is evidenced by the references themselves." Autel U.S. Inc. v. Bosch Auto. Serv. Solutions LLC, IPR2014-00183, Paper 59, slip op. at 11 (May 5, 2015). In Autel, for example, the Board relied on specific examples from a prior art reference in making a detailed finding of the level of ordinary skill. Autel, IPR2014-00183, slip op. at 14-15 (finding level of ordinary skill included familiarity with certain tools and sensors used during vehicle service by an automotive technician); see also Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83, slip op. at 34 (Mar. 23, 2014) (finding level of ordinary skill, based on prior art, included familiarity with "the use of tolerance...