shutterstock_439759441The Federal Circuit vacated the PTAB’s finding of nonobviousness of Verinata’s patent directed to methods of noninvasive prenatal testing, and remanded the case back to the Board.1 The Federal Circuit remanded because it couldn’t conclude whether the Board erred based on the PTAB’s opinion. The Board’s language was too vague to come to a definitive conclusion on this point. In its explanation for vacating and remanding the case, the Federal Circuit clarified the appropriate circumstances where the PTAB could limit its consideration of a prior art reference.

The PTAB is in error if it declines to consider the reference as evidence of the background understanding of skilled artisans during the relevant time frame simply because the reference had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness.2 On the other hand, the Board does not err if it only finds that the development of the argument invoking the reference in the Petitions was inadequate.3

The Federal Circuit’s consideration of a second cited reference in the same Petition further clarifies this issue. The Petitioner, Ariosa, also challenged the Board’s decision on the separate ground that the Board erred in failing to consider some embodiments of a reference that the Board in fact relied on to institute the petition.4 The Federal Circuit disagreed with Ariosa on this point, finding that Ariosa’s Reply relied on previously unidentified portions of a prior art reference to make in its obviousness argument.5 The Board cited 37 C.F.R. 42.104(b)(5), which says that a Petition must identify “[t]he supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.”6 Thus, the Petition (not the Reply) must state the relevance of a reference or identify specific portions of the evidence that support the challenge.

This decision again emphasizes the need to put all relevant evidence up front in the Petition. Failing that, the challenger should try to characterize any new evidence in its Reply as background information regarding the state of the art as of the relevant time frame.

1 Ariosa Diagnostics v. Verinata Health, Inc., No. 2012-1215, slip. op. (Fed. Cir. Nov. 16, 2016).
2 Id. at 11
3 Id. at 12
4 Id. at 16
5 Id. at 16-17
6 Id. at 17