CAFC: Success/Motivation Record Intertwined in Predictable Arts

As borne out by historical PTAB statistics, and not unexpectedly so, patents in the unpredictable arts are more likely to withstand PTAB scrutiny as compared to patents in the predictable arts. For example, formulating a pharmaceutical has a lot more variables and unknowns than adding a drop-down menu to a particular computer interface. The latter requiring only a change in computer code. For this reason a successful obviousness challenge in the unpredictable arts typically requires far more evidence/effort on such showings as “expectations of success” in combing prior art references.

That is not to say that Patent Owners in the predictable arts should forego potential arguments on expectation of success. Rather, such Patent Owners need to be mindful that an expectation of success argument may have a limited shelf-life.

First, an expectation of success in combining prior art references in the predictable arts is often inherent to a combination. Using the example above, if a motivation exists to apply a certain interface menu teaching to a base reference of an obviousness combination, the expectation of success and motivation are often intertwined. That is, if you have a reason to apply the teaching, there is no great challenge to doing so (just write the necessary code). But, of course, not every case in the predictable arts is so straightforward.

This past week the Federal Circuit considered an expectation of success argument in the predictable arts as it related to electro-mechanical assemblies. In Elekta Limited v. Zap Surgical Systems Inc., the Court found that while an “expectation of success” was not explicitly identified by the Board in its Final Written Decision (FWD), the trial record nonetheless demonstrated that this aspect of the obviousness ground was satisfied, explaining (here):

Unlike a motivation to combine determination, which requires an explicit analysis, a finding of reasonable expectation of success can be implicit. We understand that requiring less than an explicit statement may appear to be in tension with our review of Board determinations under the Administrative Procedure Act (“APA”), which requires the Board to explain its decisions with sufficient precision, including the underlying fact findings and rationale. But there is no such tension where the Board makes an implicit finding on reasonable expectation of success by considering and addressing other, intertwined arguments, including, as we hold today, a motivation to combine.

. . . .

[W]e can reasonably discern that the Board considered and implicitly addressed reasonable expectation of success based on the arguments and evidence presented to the Board on motivation to combine. For example, Elekta raised reasonable expectation of success arguments before the Board in asserting that ZAP’s proposed combination would result in an inoperable device, result in an inferior quality product, and would teach away because the combination would not produce the result sought by the ’648 patent owner due to the heavy weight of the linac.

. . . .

These and other of Elekta’s similar arguments also were made in connection with whether a skilled artisan would have been motivated to combine the prior art. In these circumstances, the Board made no error in addressing the issues of motivation to combine and reasonable expectation of success in the same blended manner that Elekta chose to present those very issues.

(internal quotes/citations omitted)

Here, as noted by the Court, the Patent Owner appeared to have some viable expectation of success arguments pertaining to the proposed combination (weight of the modified elements, safety, less precision, etc.). But on a full trial record, these issues were developed and dispatched — albeit in the context of motivation to combine analysis.

What this case should illustrate for Patent Owners is not that the PTAB doesn’t value expectation of success arguments, but instead, timing is everything.

The time to fault a trial ground on expectation of success (in the predictable arts) is prior to institution. This is because it is very common —even typical— for predictable art petitions to completely overlook or half-heartedly address such issues.

In a Patent Owner Preliminary Response (POPR) to such a petition, arguments directed to issues of expectation of success (in Elekta, added weight of a modification, safety, and precision) are far more effective as the Petitioner is not entitled to a response to the POPR. And, given the petition is silent/underdeveloped on such issues, a POPR accompanied by a targeted declaration on point is an unfair fight. Compare that to the alternative of holding back these arguments for trial: Patent Owner makes the arguments in its opening brief; next, Petitioner responds with further argument/evidence as a matter of right. As can be appreciated, Patent Owner’s keeping their powder dry in such scenarios is self-defeating.

Sadly, Patent Owners rarely appreciate the strategic value of targeted POPR declarations because they too often rely on their plaintiff counsel at the PTAB, which is more accustomed to the slowly developed positions of district court litigation.