Federal Circuit Says: Mind the “Plainly Obvious” Gap
In DSS Technology Management v. Apple, the Federal Circuit reversed a holding of unpatentability of claims that the PTAB considered plainly obvious in an IPR. The Federal Circuit found that merely stating that the claims were obvious did not fill a gap in the case of obviousness, such that the PTAB had failed to provide a sufficient explanation for its conclusion. The Federal Circuit then reversed the finding of obviousness (rather than remanding for the PTAB to elaborate), reasoning that there was insufficient evidence in the record to enable the PTAB to offer an adequate explanation—leaving the claims intact.
At issue were claims to a wireless network for wireless communication between a server and portable, battery-powered devices. The parties did not dispute that a single reference showed most of the claimed elements, including a server and portable, battery-powered devices with transmitters that were “energized in low duty cycle RF bursts,” as a way to conserve battery power.
However, the claims also required that the transmitter in the server similarly be “energized in low duty cycle RF bursts.” The PTAB agreed with the patent owner that the reference did not disclose that the server transmitted “low duty cycle RF bursts,” as that term had been construed. Nonetheless, the PTAB found the claims unpatentable, apparently accepting the petitioner’s reasoning that it would have been “plainly obvious” to have the server transmit with the same burst pattern as the portable devices in the system. The petitioner argued that the circuitry for the server and the portable units described in the reference was similar such that a person of ordinary skill in the art would have been motivated by the desire to save battery power to use the “low duty cycle RF bursts” on the server, too, and applying that known technique on the server required no more than “ordinary creativity.”
The Federal Circuit saw it differently. The majority reasoned that, in basing its decision on the claim limitation missing from the reference being plainly obvious, the PTAB had resorted to a “gap filler,” similar to resorting to “common sense.” Use of such gap fillers was held to require a “searching” inquiry in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). The PTAB’s final written decision could not withstand that searching inquiry, as the decision rested on the assertion, without any evidentiary support or adequate explanation, that modifying the server of the reference would have been obvious.
The arguments and evidence submitted in the IPR by the petitioner could not save the PTAB’s decision. The petitioner’s expert testimony was conclusory and, in any event, the PTAB never stated it was accepting the petitioner’s arguments or why. Moreover, the Federal Circuit pointed to holes in the petitioner’s evidence, including that the server in the reference was not a portable, battery-powered device, such that the PTAB’s stated motivation for modifying the server was inconsistent with the facts.