USPTO's Board of Patent Appeals and Interferences (BPAI) held invalid various claims in U.S. Patent No. 6,260,097, (Rambus Inc. v. Rea (Fed. Cir. 2013)). Rambus appealed. Alison Baldwin, writing in Patent Docs, alerted IP Value Wire to the Court’s instructions regarding three serious due process errors committed by BPAI. Those concerned and responsible for patent value recognize the importance of the Federal Circuit’s oversight.
First, the Board deftly shifted the burden of proof that the patent claims were not obvious onto Rambus, concluding in its opinion that "Rambus ha[d] not demonstrated that skilled artisans . . . would not have been able to arrive at the broadly claimed invention." That didn’t fly. In reexamination proceedings, “a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application.” The burden of proof remains with the Patent Office.
Second, the Board supplemented the examiner’s findings with its own reasons to come to its own conclusion of nonobviousness. “The Board may not “rel[y] on new facts and rationales not previously raised to the applicant by the examiner.” This is not to say the Board cannot bring up more issues. “The Board may elaborate on the examiner’s findings, so long as the appellant had an adequate opportunity to respond to the Board’s findings during the PTO proceeding.”
Finally, the Court dismissed the Board’s attempt to have it both ways with Rambus on the nonobviousness issue and Rambus’ reliance on evidence of one claim element:
When Rambus presented uncontested evidence of market need and industry praise for the claimed “dual-edge data transfer functionality,” the Board held that this evidence was not commensurate with the scope of the claims because the evidence discussed only one embodiment of the claims. The Court pointed out a patentee is not required to produce objective evidence of nonobviousness for every potential embodiment of the claim to reach the threshold of “commensurate with the scope of the claims.”
At the same time, the Board held that all of the objective evidence of non-obviousness presented by Rambus lacked a nexus because the single claim element of "dual-edge functionality" was disclosed in the prior art and, therefore, was not novel. The Court reminded the BPAI that the obviousness inquiry must relate to "the claimed invention as a whole," and that the evidence presented by Rambus was not limited to just the feature disclosed in the prior art.