United States Federal Circuit

In a patent holder's appeal of an inter partes review of a patent directed to technology in the field of oil drilling through use of hydraulic fracturing, commonly known as 'fracking,' the final written decision of The Patent Trial and Appeal Board holding all challenged claims of the patent obvious under 35 U.S.C. section 103 is reversed where the Board: 1) erred in shifting the burden of proof on obviousness in this IPR from the petitioner to the patent owner; 2) failed to articulate a sufficient rationale for why a skilled artisan would have sought to combine the asserted prior art to achieve the claimed invention; 3) premised its decision on a legally incorrect standard for assessing obviousness; and 4) relied on factual findings regarding the alleged motivation to combine which lacked substantial evidence.

Appellate Information

• Published 2016/07/25

Judges

• O'MALLEY

Court

• United States Federal Circuit

Counsel