CAFC Overturns PTAB IPR Decision for Refusing to Consider Motivation to Combine

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson, Bob Schaffer, Lindsay Henner, and Puja Dave


Federal Circuit Review No. 77-2.
Federal Circuit Overturns PTAB IPR Decision Refusing to Consider Background Reference Cited as Motivation to Combine Potentially Invalidating Prior Art

Ariosa Diagnostics v. Verinata Health, Inc., No. 2015-1215, 2015-1226, 2015 U.S. App. LEXIS 19847 (Fed. Cir. Nov. 16, 2015) (Before Wallach, Taranto, and Prost , CJ.) (Opinion for the court, Taranto, J.). Click Here for a copy of the opinion.

In a November 16, 2015 decision, the Federal Circuit remanded an IPR decision based on a finding that non-invalidating prior art references are evidence of the state of the art and knowledge of a person of skill at the time of an alleged invention at issue, and should be considered by the Patent Trial and Appeal Board (the “Board”).

During an IPR trial, Petitioner Ariosa identified as an exhibit a reference that, while not invalidating prior art to the challenged patent, allegedly supplied motivation to combine potentially invalidating prior art references.  The Board refused to consider the background reference as motivation to combine in light of the fact that Ariosa had not identified the reference as a prior art reference in its obviousness combinations listed in the initial petition for review.  Ariosa asserted that the background reference was an exhibit to the petition’s accompanying expert declaration, but the Board declined to search through the record outside of the petition and piece together teachings that might support Ariosa’s position.  The Board further held that Ariosa’s petition and accompanying expert declaration did not show how to consider the prior art references together, or give a reason, with rational underpinnings, to support a conclusion of obviousness.

federal-circuit-windows-335On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination for obviousness.”  The Federal Circuit agreed with Ariosa’s position that the background reference should have been considered by the Board, stating that background art must be considered even though such art is not true “prior art” presented as the basis of obviousness grounds for review.  While the Court did agree that Ariosa’s articulation of the background reference’s impact on motivation to combine prior art references was lacking, the Court found the Board’s explanation for its failure to consider the reference equally lacking and thus warranting remand.  The Court’s instructions to the Board on remand were to further articulate the ways in which Ariosa failed to sufficiently argue the relevance of the background reference, and then “decide whether its treatment of [the reference] should be left as is, supplemented, or revised.”


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Join the Discussion

No comments yet.