Federal Circuit Reverses PTAB Obviousness Decision for the Board's Failure to Adequately Articulate an Obviousness Rationale

May 25, 2016
Post by Jonathan L. Kennedy

In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board's (PTAB) finding of obviousness of two claims.  The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer.  The PTAB had instituted the IPR on two apparatus claims, claims 7 and 10, and two method claims, claims 16 and 17.  The apparatus claims were directed to the string trimmer, including, the trimming line, motor, housing, and mounting plate. The PTAB found that the apparatus claims were not obvious in view of the combination of references considered.  The method claims were directed to a method of assembling an outdoor power tool and contained many of the same components as the apparatus claims.  Despite finding the apparatus claims were not obvious, the PTAB found that the method claims were obvious in view of a single reference, Mack et al., U.S. Patent No. 4,498,237, which was the primary reference considered against the apparatus claims. 

Black & Decker appealed the PTAB's decision arguing that the PTAB committed legal error in finding claims 16 and 17 obvious.  Black & Decker argued that the PTAB erred in relying on figures that were not drawn to scale and in failing to articulate a reason why a person of ordinary skill in the art would modify Mack et al. to meet the "fixedly securing" limitation in independent claim 16.  In finding claims 16 and 17 obvious, the PTAB stated, "Mack suggests this limitation [and] [o]ne of ordinary skill in the art would have known to fasten plate 45 to motor 25 of Mack so that relative movement is prevented in order to support motor 25 against rotation as taught by Mack.Black & Decker, Inc. v. Positec USA, Inc., IPR2013-00502, at 31 (PTAB Jan. 29, 2015).  In reversing the PTAB, the Federal Circuit stated, "the Board failed to articulate a reason why a person of ordinary skill in the art would modify Mack to meet the "fixedly securing" limitation.  Black & Decker, Inc. v. Positec USA, Inc., 2015-1646, 2015-1647, Slip Op., at 14 (Fed. Cir. May 18, 2016).  The Federal Circuit went on to state that the PTAB's statements that "one of skill in the art 'would have known' or 'could have'" were "not sufficient."  Id.  Rather, the Federal Circuit noted, "Our precedent required that the Board explain why one of skill in the art would have adapted or replaced Mack's motor mounting yoke to ensure that the motor did not move relative to the motor mounting structure."  Id. at pp. 14-15. Finally, the Federal Circuit held that Board's conclusion that Mack suggested "fixedly securing" was not supported by substantial evidence.

While this decision is not precedential, it is a strong reminder of the burden that must be overcome for a prima facie case of obviousness to exist. 

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