Processing All Things Federal Circuit
January 25, 2021 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (January 18-22): Factual Obviousness and Yet Another Arthrex Challenge

Last Week in the Federal Circuit (January 18-22): Factual Obviousness and Yet Another Arthrex Challenge

Although the Federal Circuit has had a busy January, last week was light on precedential decisions (just one, in a case from the MSPB). Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 1

Non-precedential opinions: 8

Rule 36: 1

Longest and shortest pending case from argument:SIPCO, LLC v. Emerson Electric Co., No. 18-1364 (2 days)

Case of the week:Infineum USA L.P. v. Chevron Oronite Company LLC, No. 20-1333

Panel:  Judges O’Malley, Taranto, and Stoll, with Judge Stoll writing the opinion

You should read this case if:  you have a matter involving common IPR issues, like procedural and factual obviousness challenges, or a constitutional challenge under Arthrex

Infineum owns a motor oil patent. Roughly a week after the Federal Circuit’s decision in Arthrexwhich we’ve discussed before—the Patent Trial and Appeal Board found Infineum’s claims unpatentable for obviousness.

On appeal, the Federal Circuit rejected Infineum’s allegations of error. Although Inifineum argued the Board wrongly relied on new arguments, the Federal Circuit drew a line between new arguments and new evidence. Both the America Invents Act and the Administrative Procedure Act expect parties to introduce new evidence during administrative proceedings. The Federal Circuit found that was all the Board had permitted in this case.

The Federal Circuit also rejected Inifineum’s challenge that the petitioner’s expert was not sufficiently qualified to opine on the disputed technology. The Court held that admitting the expert was an issue within the Board’s discretion, and the Board had appropriately exercised that discretion in reviewing the expert’s credentials and experience. The Court also made clear that the weight to give the expert’s testimony given the expert’s background and experience was an issue for the Board.

The Court similarly dismissed Infineum’s challenge that the Board accepted a “hindsight analysis” because the petitioner’s expert relied on certain prior-art examples when other examples performed better: “We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”

Finally, the Court refused to send the case back to the Board under the Federal Circuit’s Arthrex decision. Although the Supreme Court is reviewing Arthrex (Supreme Court to Review Arthrex: Big Deal or Ho Hum?), as we previously observed (Orders of Interest Roundup, Arthrex Style), the Federal Circuit continues to apply Arthrex when presented with materially identical facts. In Infineum’s case, the Board issued its final written decision after the Federal Circuit issued its Arthrex decision holding that Board judges going forward are inferior officers properly appointed by a department head. As a matter of Federal Circuit precedent, that foreclosed Infineum’s argument that Board judges remain unconstitutionally appointed after Arthrex. The Court had already concluded in an earlier case that there is no Appointments Clause violation for Board decisions “issued after Arthrex was decided,” meaning after the opinion issued.