On September 21, 2023, the Federal Circuit considered an expectation of success argument in the predictable arts as it related to electro-mechanical assemblies. In Elekta Limited v. Zap Surgical Systems Inc., the court found that while an “expectation of success” was not explicitly identified by the Board in its final written decision, the record nonetheless demonstrated that this aspect of the obviousness ground was satisfied. As noted by the Court, the patent owner appeared to have some expectation of success arguments pertaining to the proposed combination, but these issues were developed and dispatched at trial — albeit in the context of motivation to combine analysis.
An analysis of PTAB statistics shows that patents in the unpredictable arts are more likely to withstand PTAB scrutiny as compared to patents in the predictable arts. For example, formulating a pharmaceutical has a lot more variables and unknowns than a particular computer interface. For this reason, a successful obviousness challenge in the unpredictable arts typically requires far more evidence/effort on such showings as “expectations of success” in combining prior art references.
Patent owners in the predictable arts should not necessarily forego potential arguments on expectation of success, but should be mindful that an expectation of success argument may have a limited shelf-life. The time to fault a trial ground on expectation of success (in the predictable arts) is prior to institution.
What are some takeaways you can apply to your strategy?
In a Patent Owner Preliminary Response (POPR) to a predictable art petition, arguments directed to issues of expectation of success (in Elekta, added weight of a modification, safety, and precision) could be more effective as the petitioner is not always entitled to a response to the POPR. And, if the petition lacks evidence on such issues, a POPR accompanied by a targeted declaration on point is an unfair fight. Compare that to the alternative of holding back these arguments for trial: patent owner makes the arguments in its opening brief; next, petitioner responds with further argument/evidence as a matter of right. As can be appreciated, patent owners keeping their powder dry in such scenarios can be self-defeating.
Plaintiff counsel who are more accustomed to the slowly developed positions of district court litigation may not fully appreciate the strategic value of targeted POPR declarations, but patent owners should carefully consider them, keeping in mind that timing can be everything.
You can download the full Federal Circuit decision here.