In a recent decision, the Federal Circuit overturned the Patent Trial and Appeal Board’s (PTAB) invalidation of two claims of Black & Decker’s U.S. Patent No. 5,544,417. The Federal Circuit panel included Circuit Judges Alan Lourie, Kimberly Moore and Raymond Chen.
Beginning in 2013, Positec USA Inc. requested inter partes review of the ’417 patent in response to Black &Decker alleging that Positec infringed the ’417 patent. In its final written decision, PTAB found claims 16 and 17 of the ’417 patent obvious over U.S. Patent No. 4,498,237. PTAB found that a person of ordinary skill in the art “would have known” how to arrive at the invention disclosed in claims 16 and 17 in light of the ’237 patent.
On appeal, the Federal Circuit reversed PTAB’s invalidity determination. The Federal Circuit rejected PTAB’s explanation of why a person of ordinary skill in the art “would have known” how to arrive at the disclosed invention. Prior precedent “requires that [PTAB] explain a rationale why a person of ordinary skill” would have modified the prior art to arrive at the present invention. Since PTAB’s explanation was not enough to meet this standard, the Federal Circuit reversed its decision on the invalidity of claims 16 and 17.
The Federal Circuit upheld PTAB’s determination of validity for claims 7 and 10 of the ’417 patent.
Black & Decker, Inc., v. Positec USA, Inc., No. 15-1646 (Fed. Cir. May 18, 2016).