A Little
Reminder to the PTO about Due Process and the Importance of Objective Evidence
of Non-Obviousness

By Alison Baldwin —

In its decision on September 24th, the Federal Circuit reminded
the Patent Office that the principles of due process are still alive and
kicking and cannot be ignored by the Patent Office's judiciary.

The case came to the Federal Circuit on appeal from a decision
by the USPTO's Board of Patent Appeals and Interferences (BPAI) holding invalid
various claims of U.S. Patent No. 6,260,097, which had been finally rejected as
invalid by the examiner during an inter partes
reexamination.  The '097 patent relates
to dynamic random-access memory (DRAM).  Specifically,
the claims are directed to what the assignee, Rambus, refers to as the "dual-edge/double-data-rate"
functionality because the system transfers data at twice the rate by employing
both the rising and falling edges of a clock signal that synchronizes the
operations within the system.  While the
technology at issue in this case is outside the normal parlance of the
Patent Docs faithful, the issues raised by the Federal Circuit in its decision
are applicable to any technology.

Rambus appealed the Board's decisions on the issues of claim
construction and obviousness.  The
Federal Circuit agreed with the Board's claim construction and, for purposes of
this post, we will not address the Court's claim construction analysis as it
was fairly routine.  The real take-away
for the reader of the Rambus v. Rea decision were the three errors the
Federal Circuit found with the Board's obviousness decision.

The first error by the Board was a shifting the burden onto the
Patentee to prove that the claims were not obvious.  In its opinion, the BPAI had concluded that "Rambus
ha[d] not demonstrated that skilled artisans . . . would not have been able to
arrive at the broadly claimed invention."  Rambus v. Rea, p. 11, citing Board decision.  As the Federal Circuit reminded the Patent
Office, the burden is the Office's, not the Applicants, to present evidence of
invalidity.  This is particularly true in
a reexamination proceeding where "a preponderance of the evidence must
show nonpatentability before the PTO may reject the claims."  Id. at 11.  As we enter the new age of reexamination
under the inter partes review
process, this opinion serves as an important reminder to the new ALJs
empaneled as part of the Patent Trial and Appeal Board.

The second error by the Board was created when the Board
supplied its own reasons, that differed from those set forth previously by the
examiner, to combine the prior art references to arrive at its obviousness
determination.  The Board may not rely on
new facts and rationales not previously raised to the applicant by the examiner
because the applicant has to have a "fair opportunity to react to the
thrust of the rejection."  Id. at 12.  If the applicant has not had an "fair
opportunity" to respond to the rejection, then the Board must designate
its decision a new ground of rejection and provide appellant with an
opportunity to respond.  The Federal
Circuit did not issue an opinion on the merits of the Board's obviousness
determination — it just took issue with the procedure used.  However, it was a good reminder to the BPAI
that these steps in the process cannot be skipped.

The final error by the Board was in its mistreatment of
objective evidence non-obviousness.  The
Board took a very restrictive view of the nexus required between the evidence
and the merits of the claimed invention.  First, Rambus presented uncontested evidence of long-felt need and industry
praise due to the claimed dual-edge data transfer functionality through an
industry article and a press release by a Rambus competitor.  However, 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 reminded the BPAI that the objective evidence need only be "reasonably
commensurate with the scope of the claims."  A patentee is not required to produce
objective evidence of nonobviousness for every potential embodiment of the
claim.

Rambus also presented uncontested evidence of commercial
success through its licensing activities relating to its dual-edge data
transfer functionality.  The Board held
that the evidence lacked nexus because "competitors have many reasons for
taking licenses which are not necessarily related to obviousness."  Id. at 15.  The Federal Circuit took issue with the Board's position because there
was no evidence in the record to support that assertion that the commercial
value of the licenses stemmed from factors other than the claimed invention.

Finally, the Board held that all of the objective evidence of
non-obviousness presented by Rambus lacked a nexus because the "dual-edge
functionality" was disclosed in the prior art and, therefore, was not
novel.  The Federal Circuit reminded the
BPAI that the obviousness inquiry must center around "the claimed
invention as a whole."  Id.  The Court held that the evidence presented by
Rambus was not limited to just the feature disclosed in the prior art.  However, the Court declined to make a final
factual determination regarding the objective evidence and remanded back to the
PTO.

Viewing the Rambus v. Rea
decision in light of other recent Federal Circuit decisions this year, such as Plantronics, Inc. v. Aliph, Inc. (July
31, 2013), Apple Inc. v. ITC (August
7, 2013), and Leo Pharmaceutical Products
v. Rea (August 12, 2013), the Federal Circuit could not be sending a
clearer message to all judiciary involved in invalidity determinations.  Objective evidence of non-obviousness is not
an optional component of the obviousness inquiry — it is absolutely required
and must be given its full consideration and weight.

Rambus Inc. v. Rea (Fed. Cir. 2013)
Panel: Circuit Judges Moore, Linn, and O'Malley
Opinion by Circuit Judge Moore