Patent Trial And Appeal Board Relies On References Not Available As IPR Prior Art In Unpatentability Decision
On October 23, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office issued a final written decision in an inter partes review (IPR) challenging United States Patent No. 9,073,641. C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2017-01275, paper no. 41 (October 23, 2018). In that decision, the PTAB relied on evidence of prior-art designs to show unpatentability, even though prior art in IPRs is limited to patents and printed publications.
An IPR is an administrative procedure by which one can challenge the patentability of an issued patent claim. Both parties submit evidence to the PTAB, which then issues a final written decision confirming or denying the patentability of the claims in question. Importantly, however, the challenge must be made “on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
In this IPR, the PTAB instituted review based on grounds consisting of prior-art patents. However, in its final written decision, the PTAB also relied on “common sense.” And in doing so, it pointed to prior-art designs — designs that were not shown in patents or printed publications. The PTAB found that the patent challenger used those designs “to support its common sense argument and identify, specifically, the knowledge of those skilled in the art.”
This decision appears problematic. It suggests that there is a difference between “the knowledge of one of skill in the art” and the prior art that is formally relied upon to prove unpatentability. The PTAB observed that “non-prior art references, such as these confidential drawings, can be considered in an obviousness analysis. Here, they constitute concrete evidence in support of Petitioner’s common sense argument.” Undoubtedly there are instances where evidence not permitted to be the basis of an IPR (e.g., declaration testimony) can be used to, for example, establish the level of ordinary skill in the art. But if all such evidence can be used to bolster what is framed as an argument based on “common sense,” the statute’s restriction to patents and printed publications may be weakened, and the field of prior art available in an IPR may effectively be broadened.