Addressing the issue of evidence required for a sustainable obviousness determination, the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB) finding of obviousness of the challenged claims because the PTAB’s rationale lacked evidentiary support. Personal Web Technologies, LLC v. Apple, Inc., Case No. 16-1174 (Fed. Cir., Feb. 14, 2017) (Taranto, J).

Apple petitioned for inter partes review of Personal Web Technologies’ (PWT’s) claims directed to methods and devices of locating data and controlling access to data. In its petition, Apple asserted that the challenged claims were obvious over two references, a position adopted by the PTAB. The PTAB further agreed with Apple that a person of ordinary skill in the art reading the two references would have understood that the combination allowed for the features of the challenged claims. PWT appealed.

In reviewing the adequacy of the PTAB’s obviousness analysis, the Federal Circuit stated that the analysis was lacking and the basis for obviousness must be made explicit: “The process of review requires that the grounds upon which the administrative agency acted be clearly disclosed and adequately sustained.” The Court noted that the PTAB discussed the first reference as satisfying an element, yet did so citing portions of Apple’s petition that relied on the second reference. The Court also found that the PTAB did not clearly address another claim element. The Court further explained that the cited portions of the references were not self-explanatory and that the Court would not rely on its own independent reading of the references. The Court concluded that the PTAB did not adequately support its findings that the prior art disclosed all elements of the challenged claims.

The Federal Circuit also found deficient the PTAB’s reasoning that a relevant skilled artisan would have had a motivation to combine the references in the way claimed. The PTAB agreed with Apple’s contention that a person of ordinary skill in the art reading the references would have understood that the references could be combined. However, the Court found that discussion did not imply a motivation to pick out the two references and combine them to arrive at the claimed invention. Rather, the Court explained that a clear, evidence-supported account of the contemplated workings of the combination is a prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have had a rationale to make the combination and reasonably expect success in doing so.