In Securus Tech v Global Tel*Link (Fed. Cir. 2017), the Federal Circuit vacated in part and remanded the USPTO, Patent Trial and Appeal Board’s (the “Board”) obviousness determination of Securus Technologies, Inc’s US Patent No 7,860,222 (the 222 patent), finding that the Board failed to provide any reasoning for its decision with respect to certain challenged claims.

Global Tel*Link Corporation (Global) filed two petitions for inter partes review of the 222 patent, alleging that all thirty-six claims were unpatentable as obvious. The Board instituted a review and found that each claim was obvious over the cited prior art references. In particular, for the independent claims, as well as certain dependent claims, the Board set forth the specific evidence and reasoning supporting its conclusion that the claims were unpatentable (that is, how a prior art reference disclosed each of the limitations of the claims at issue).  For other dependent claims, however, the Board provided only an essentially identical, generic sentence, concluding that based on the evidence, one of ordinary skill in the art would have considered these dependent claims obvious over the asserted prior art.

On appeal, Securus argued, inter alia, that the Board failed to articulate any reason supporting its decision that certain dependent claims were unpatentable. The Court agreed and noted that since obviousness is a question of law based on underlying findings of fact, the Board must “make the necessary findings and have an adequate ‘evidentiary basis for its findings.’” Further, the Board “must examine the relevant data and articulate a satisfactory explanation for its actions including a rational connection between the facts found and the choice made.”

Thus, the Court vacated and remanded for further consideration of the Board’s decision as to those claims for which the Board “failed to articulate any reasoning for reaching its decision”.

 Summary By:  Sumaiya Sharmeen

 

E-TIPS® ISSUE

17 05 03

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