Google has won a round against Intellectual Ventures at the U.S. Court of Appeals for the Federal Circuit. And the Patent Trial and Appeal Board has been chided again for not explaining its reasoning.
A Federal Circuit panel led by Judge Kara Stoll ordered the PTAB to reconsider the validity of 11 patent claims on touch-screen technology that Google had challenged as anticipated or obvious.
“Our precedent demands more than what the board’s opinion provided here,” Stoll wrote in Google v. Intellectual Ventures, noting that this has been a recurring problem with some PTAB decisions. “We cannot affirm findings that lack an adequate rationale.”
It does not appear that the PTAB was ignoring the earlier Federal Circuit rulings. The board issued its final written decision in the Google-IV case in November 2015, before the recent string of Federal Circuit decisions.
That decision by PTAB Judge Patrick Scanlon said the board did “not agree” with Google that a prior patent “expressly discloses using logical operators” as the challenged IV patent, No. 6,121,960, describes.
But, Stoll wrote, the board did not address a Google expert’s testimony that the older patent and other prior art described logical operations, even though they didn’t use those specific words. The expert cited textbooks and IEEE dictionary definitions as references, among other things. Instead of addressing them, “the board merely stated that it considered ‘all evidence and arguments’ and ‘[agreed] with [IV],’” Stoll wrote.
The board’s claim to have considered all the evidence also didn’t square with its statement that it did not rely on an IV exhibit that Google had sought to exclude from the record.
“In a close factual dispute where reasonable minds may differ in their findings based on opposing evidence, the board must provide rationale for its findings to facilitate our review,” Stoll wrote.
Judges Alan Lourie and Evan Wallach concurred. The ruling hands a win to King & Spalding partner Daryl Joseffer, who argued the appeal for Google. Knobbe Martens Olson & Bear partner Brenton Babcock argued for Intellectual Ventures.