In Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated and remanded two parallel final written decisions in favor of the Patent Owner, because it could not discern whether the Board had incorrectly limited its consideration of one of the Petitioner’s exhibits. This IPR remand decision reveals the level of scrutiny the court may be willing to apply to Board decisions, even as the court recognizes the Board’s authority to control its own proceedings.

The Evidence At Issue

The evidence at issue was Ariosa’s Exhibit 1010, “a brochure that describes indexing and massively parallel sequencing using the commercially available Illumina Genome Analyzer System.” The exhibit was not one of the references asserted to render the claims obvious, and was not directly cited in Ariosa’s IPR Petitions, but was discussed in Ariosa’s expert declarations as evidence of the state of the art, in support of Ariosa’s position that the massively parallel sequencing methods recited in the challenged claims “were in routine use by 2008.”

The exhibit was discussed in more detail in an expert declaration submitted with Ariosa’s Reply, which garnered these comments in the Board decisions:

This testimony, in effect, replaces the tagging and sequencing techniques of Dhallan and Binladen [which were relied upon to establish obviousness] with the Illumina indexing kit and sequencing platform, but neither Petitioner nor Dr. Morton explains why Exhibit 1010 could not have been presented as part of the asserted ground of unpatentability in the first instance with the Petition.* Therefore we accord this aspect of Dr. Morton’s testimony no weight.

* “A reply may only respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). That is, “[r]eply evidence . . . must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.” Rules of Practice for Trials before the Patent Trial and Appeal Board, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2014).

The Board’s Must Consider Evidence Of The State Of The Art

The Federal Circuit decision was authored by Judge Taranto and joined by Chief Judge Prost and Judge Wallach.

On appeal, Ariosa challenged the Board’s treatment of Exhibit 1010, arguing that the Board erred in refusing to consider it “for what it showed about the background knowledge that a skilled artisan would have possessed.”

The court found that the Board’s comments regarding Exhibit 1010 could support two possibilities:

• If “the Board [declined] to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness,” then “the Board erred.”

• If “[t]he Board [was] saying only that the development of the argument invoking Exhibit 1010 in the Petitions was not adequate,” then the Board’s lack of “consideration of Exhibit 1010 … was actually relying on a legally proper ground.”

Because the court could not discern the Board’s rationale, it vacated and remanded the decisions.

Directions For IPR Remand

When the Federal Circuit ordered a remand-in-part in Microsoft Corp. v. Proxyconn, Inc., it did not comment on how the Board should conduct the remand proceedings. In this case, the court provided some guidance as to how it expects the Board to proceed:

We do not direct the Board to take new evidence or, even, to accept new briefing. The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a). Those statutes, regulations, and practices embody expedition and efficiency-based policies that the Board must consider in determining the scope of the remand proceedings.

Congress generally directed that inter partes review proceedings be completed within one year of institution. 35 U.S.C. § 316(a)(11). Reflecting that timing constraint, and the statutory goal of providing a relatively quick and low-cost alternative to litigation over validity, the PTO has established rules that, while necessarily respecting constitutional and statutory guarantees of procedural fairness, are designed generally to require that the parties make their cases in a very small number of filings— with the challenger obliged to make an adequate case in its Petition and the Reply limited to a true rebuttal role. 37 C.F.R. §§ 42.104(b)(5), 42.23(b). Within this structure, even while providing for an estoppel effect on the challenger, 35 U.S.C. § 315(e), Congress assigned to the challenger the burden of persuasion in the dispute, id. § 316(e). That burden, together with the procedural rules impartially applied, means that, in some cases, a challenge can fail even if different evidence and arguments might have led to success. We leave to the Board the determination of what remand proceedings are appropriate given the governing policies.

In its Proxyconn decision, the court vacated- and remanded-in-part based on an incorrect claim construction, and the Board ordered additional briefing under the court’s claim construction. Here, it seems less likely that the Board would need to hear more from the parties before revisiting its original decisions.