“Teaching Away” Analysis Not Satisfied By Conclusory Characterization as “Subjective Preference”
Polaris Industries, Inc. v. Arctic Cat, Inc., 2018 WL 797462 (Fed. Cir. Feb. 9, 2018) (Lourie, O’MALLEY, Hughes) (PTAB) (3 of 5 stars)
Fed Cir part affirms, part vacates one IPR’s determination of non-patentability for Polaris’s claims, and affirms determination that separate IPR did not prove claims unpatentable. Polaris’s patent related to a side-by-side ATV. For the first IPR, the opinion rejects Polaris’s argument that the PTAB construed terms in one claim too broadly, and thus finds no error in the obviousness finding. As to another claim, substantial evidence supported the PTAB’s determination that a person of skill would have been motivated to make the modification to prior art proposed by Arctic Cat. While the PTAB’s decision did not treat Polaris’s counterargument in detail, its treatment was “was at least commensurate with” Polaris’s thin presentation of the issue, per Novartis, 853 F.3d 1316 (Fed. Cir. 2017).
As to three dependent claims, the PTAB erred by failing to adequately treat certain evidence and arguments from Polaris concerning teaching away. It was insufficient for the PTAB to reject Polaris’s “teaching away” contention by characterizing it as reciting merely “subjective preferences” of the skilled artisan. “We have never articulated a framework for analyzing whether claims would have been obvious that includes the phrase ‘subjective preference’ or that permits a tribunal to wholly disregard the significance of prior art teachings based on such a characterization.” Op. at 19. On remand, the PTAB should determine whether the prior art merely expresses a “general preference” against the proposed combination for these dependent claims, or actually “criticize[s], discredit[s], or otherwise discourage[s]” it, as per DePuy, 567 F.3d 1314 (Fed. Cir. 2009). The record also supported the PTAB’s finding that a person of skill would have been motivated to reach the independent claim’s ATV invention by beginning with a dune buggy, noting that the dune buggies and ATVs are “analogous arts.”
As to other dependent claims, PTAB also erred by failing to credit Polaris’s evidence of commercial success, and its evidence that its “RZR” vehicles “embody and are coextensive with” those claims. While the Board rejected as conclusory the opinions from Polaris’s expert, Arctic Cat presented no contradictory evidence. “Our case law does not require a patentee and its expert to go further than Polaris did here, however, to demonstrate that its commercial products are the inventions disclosed in the challenged claims, where the proffered evidence is not rebutted and the technology is relatively simple.” Op. at 28. On remand, the PTAB should presume that a nexus between the claims and the RZR’s commercial success exists, absent rebuttal.
As to the second IPR, the PTAB did not err in determining that the broadest reasonable interpretation of the claim term “extending between” excluded the possibility of intervening structures. The opinion rejects Arctic Cat’s argument, and notes that the specification uses the term several times without ever depicting an intervening structure.
KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES); OBVIOUSNESS (NO); TEACHING AWAY; COMMERCIAL SUCCESS; BROADEST REASONABLE INTERPRETATION