On July 17, 2017, the Patent and Trial Appeal Board (the “Board”) granted in-part, Patent Owner’s conditional motion to amend on remand from an appeal to the Federal Circuit. In a final written decision issued in April 2015, the Board found that all of the challenged claims were obvious under 35 U.S.C. § 103. In doing so, the Board also denied Patent Owner’s conditional motion to amend (with proposed substitute claims 26 and 27). The Federal Circuit upheld the Board’s decision on obvious and underlying claim construction. But it vacated the Board’s denial of the motion to amend as arbitrary and capricious because it failed to consider the patentability of the proposed substitute claims. Instead, the Board denied the motion on an apparent technicality because “the patent owner [did not] discuss whether each newly added feature was separately known in the prior art.”
Obviousness challenges are popular post-grant challenges before the Patent Trial and Appeal Board (PTAB). Generally, under 35 U.S.C. § 103 (“§ 103”), the courts make legal and factual inquiries into (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, and (3) the level of ordinary skill in the pertinent art (the “Graham factors”). In addition, secondary considerations may be used to create an inference of nonobviousness to help overcome challenges under § 103. Secondary considerations include copying of the invention by third parties and commercial success. A string of recent decisions before the PTAB, such as the recent PTAB inter partes review decision in Varian Medical Systems, Inc. v. William Beaumont Hospital, have bolstered the usefulness and importance of secondary considerations in obviousness analyses.