Director Review: The Board Must Resolve Claim Construction Disputes and Analyze Each of the Graham Factors When Weighing Objective Evidence of Nonobviousness

In Nearmap US, Inc. v. Eagle View Technologies, Inc., [1] the Director of the USPTO vacated and remanded a Final Written Decision holding claims not unpatentable in view of objective evidence of nonobviousness.

Before the Board, the parties disputed the patentability of claims relating to a user interface for facilitating generation of roof models based on one or more aerial images of a building. Petitioner Nearmap asserted two obviousness grounds—one conditioned on claim constructions contending that certain claim elements were not entitled to patentable weight and a second, alternative ground construing those elements as having patentable weight. In response, Patent Owner Eagle View argued that all elements of the claims were entitled to patentable weight and that Nearmap’s first unpatentability ground failed to disclose each of the claimed features. Eagle View further argued that Nearmap’s second unpatentability ground lacked sufficient motivation to combine the cited references and that the claims were nonobvious in view of objective evidence of  nonobviousness. Specifically, Eagle View argued that products embodying the claims had achieved commercial success and industry praise sufficient to demonstrate nonobviousness over the prior art.

In its Final Written Decision, the Board determined that Nearmap had failed to demonstrate that any of the challenged claims were unpatentable, concluding that Eagle View’s “objective indicia of non-obviousness are decisive in this case.” [2] The Board acknowledged that “[a] different petitioner challenged the same patent at issue in this case,” and in that other case “the Board found secondary considerations of nonobviousness . . . decisive in concluding that the petitioner had not shown the challenged claims were unpatentable.” [3] The Board also recognized that the Federal Circuit had affirmed that prior decision. With respect to Nearmap’s evidence and arguments of obviousness, the Board stated that it “considered” and “weighed” them against Eagle’s evidence of non-obviousness, and concluded that “[e]ven accepting Petitioner’s contentions regarding what the prior art teaches and why one skilled in the art would have combined the references in the way Petitioner proposes, we are persuaded that Patent Owner’s contentions as to secondary considerations of non-obviousness outweigh Petitioner’s obviousness contentions.” [4]

On Nearmap’s request, the Director granted review of the Final Written Decision. According to Nearmap, the Board failed to address the parties’ claim construction dispute and did not analyze the Graham factors in its determination of nonobviousness. [5] The Director agreed with Nearmap, vacating and remanding the Final Written Decision for further proceedings. [6] The Director determined that the Board “did not provide adequate reasoning to support its conclusion of nonobviousness, nor did it adequately address the disputed issues.” [7] Specifically, the Board had only provided a “summary of Petitioner’s contentions,” without explaining how and why it had assigned particular weight to the objective evidence of nonobviousness over the other Graham factors. It was also unclear to the Director whether the Board had accepted and applied the no-patentable-weight construction proposed by Nearmap. On remand, the Director ordered the Board to “set forth the claim construction it applies to the claim language argued by the parties” and “provide a full analysis sufficient to satisfy all Graham factors.” [8]

Takeaway

The Director’s decision in this case is interesting because it highlights the need for the Board to fully explain its reasoning under the Graham factors, as well as the need to resolve claim construction disputes in a final written decision. The Director made clear that the Board need not always reach an express construction in the face of a dispute, but “where that dispute materially affects the Board’s determinations, it is necessary to resolve the dispute.” [9] Even in instances where patentability was previously challenged and upheld on appeal, the Board is still required to fully explain its reasoning, including analyzing each of the Graham factors and explaining how it weighed each factor in determining nonobviousness. Practitioners should consider requesting Director review when the Board does not present a complete analysis, or when the Board does not clearly resolve a claim construction dispute in a final written decision.

Endnotes

[1] IPR2022-00734, Paper 43 (P.T.A.B. Feb. 20, 2024).

[2] IPR2022-00734, Paper 41 at 10-15 (P.T.A.B. Dec. 4, 2023) (citing IPR2016-00592).

[3] Id.

[4] Id. at 15-16.

[5] IPR2022-00734, Paper 43 at 2 (P.T.A.B. Feb. 20, 2024).

[6] Id. at 7-8.

[7] Id.

[8] Id. at 9.

[9] Id. at 9 n.5.