Summary
This Federal Circuit opinion reviews a Patent Trial and Appeal Board final written decision in an inter partes review proceeding concerning U.S. Patent No. 9,964,266. The court addresses whether the appellant failed to demonstrate that claim 22 was obvious over prior art references and rejects a jurisdictional challenge regarding the timeliness of the notice of appeal. Finding substantial evidence supporting the Board’s conclusion that the petition lacked sufficient analysis for a key claim limitation, the court affirms the PTAB’s decision.
Topics
Practice areas
Questions Presented
- Whether the Federal Circuit has jurisdiction over the appeal despite alleged non‑compliance with 37 C.F.R. §90.2(a)(3)(ii).
- Whether claim 22 of the ’266 patent is obvious and therefore unpatentable.
Holdings
- The Court held that the regulatory filing requirement is not jurisdictional; therefore it has jurisdiction to hear the appeal.
- The Court affirmed the Board’s finding that claim 22 is not obvious; the Board’s decision is supported by substantial evidence.
Key quotations
““When Congress enacts a jurisdictional requirement, it mark[s] the bounds of a court’s power: A litigant’s failure to follow the rule deprives a court of all authority to hear a case.””
““The law of obviousness does not require the court, or the Board, to develop arguments for a limitation that the petition simply did not make.””
Factual background
DMF, Inc. owns U.S. Patent No. 9,964,266 covering a compact recessed lighting system. The dispute centered on claim 22, which requires a plurality of wires connected to a driver and to a second connector that is coupled to electricity from a building’s electrical system. Amp Plus (ELCO) argued the claim was obvious in view of Imtra 2011 and Imtra 2007 brochures.
Procedural history
The Patent Trial and Appeal Board found claim 22 of U.S. Patent No. 9,964,266 unpatentable as obvious and vacated and remanded for further consideration. After remand, the Board again concluded claim 22 was not obvious. The appellant appealed to the Federal Circuit, which affirmed the Board’s ultimate determination.