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Rovalma S.A. v. Bohler-Edelstahl GmbH & Co.

IPR Statute Does Not Bar Board from Relying on Patentee’s Own Submissions to Find Obviousness

Rovalma S.A. v. Bohler-Edelstahl GmbH & Co., (Fed. Cir. May 11, 2017) (Wallach, TARANTO, Stoll) (PTAB) (3 of 5 stars)

Fed Cir vacates IPR determination of obviousness. The PTAB had switched its claim construction view—the institution adopted the constructions of the petitioner, Böhler, but the final decision adopted the constructions of patentee Rovalma. The final decision relied in part on Rovalma’s own submissions to find obviousness. The Board erred by failing to sufficiently explain the basis for its decision. Specifically, the Board only substantively discussed one of the limitations of the claims, and applied generally conclusory reasoning to the others. The Board’s discussion of motivation to combine was also lacking. This alone was sufficient to warrant vacatur and remand so that the Board can better explain itself.

The IPR statute did not bar the Board from relying on Rovalma’s own submissions to support its obviousness determination. Rovalma had notice of the arguments Böhler was making, and an opportunity to be heard responding to them. Magnum Oil Tools, 829 F.3d 1364 (Fed. Cir. 2016), is not contrary because the Board in this appeal did not engage in improper burden-shifting. It is well-established in other contexts that a tribunal may rely on a party’s own submissions in making findings against it.

The Fed Cir remands on Rovalma’s contention that it did not receive sufficient process under the APA. The same deficiencies in the Board’s final decision discussed above make it impossible to “conclusively determine whether the Board’s actions complied with the APA’s procedural requirements.” Op. at 17.

KEYWORDS: INTER PARTES REVIEW