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CRFD Research, Inc. v. Matal

PTAB May Not Shortcut IPR Obviousness Analysis By Over-Reliance on Non-Anticipation Findings

CRFD Research, Inc. v. Matal, 2017 U.S. App. LEXIS 24493 (Fed. Cir. Dec. 5, 2017) (Newman, Mayer, O’MALLEY) (PTAB) (2 of 5 stars)

In consolidation of three IPR appeals on the same patent (two invalidating claims, one confirming patentability), Fed Cir affirms the first two and reverses the third (i.e., all challenged claims unpatentable). CRFD’s patent related to technology for transferring an ongoing communication session from one device to another. The opinion analyzes the three written decisions one after the other.

First decision: The PTAB did not err in finding certain CRFD claims anticipated or obvious, and the opinion discusses how the PTAB’s determinations were supported by substantial evidence.

Second decision: The PTAB did not err in finding other CRFD claims anticipated or obvious. For some of these, the reasoning of the first decision applies; for others, the opinion discusses how the PTAB’s determinations were supported by substantial evidence.

Third decision: The PTAB committed legal error by failing to separately analyze certain obviousness arguments made by the petitioner Hulu, and by generally over-relying on a previously-performed anticipation analysis. “Whatever the merits of the Board’s determination that [a reference] does not anticipate . . . [a certain limitation], its findings on anticipation are insufficient as a matter of law to decide the obviousness inquiry.” Op. at 28. The Board also erred by declining to consider arguments in Hulu’s petition relating to a non-instituted single-reference obviousness analysis, that Hulu had incorporated into its multiple-reference grounds. “To bar Hulu from pressing an argument it raised in a ground the Board found ‘redundant’ and that it expressly incorporated into other proposed grounds of unpatentability on which the Board instituted would not only unfairly prejudice Hulu, but would also raise questions about the propriety of the Board’s redundancy decision.” Id. at 29. Under a proper obviousness analysis, the record demonstrated the unpatentability of CRFD’s claim.

KEYWORDS: OBVIOUSNESS (YES); ANTICIPATION (YES); INTER PARTES REVIEW