Let’s Try This Again: Failure to Consider Evidence of Ordinary Skill in IPR Justifies Remand

In Ariosa Diagnostics v. Verinata Health, Inc., Nos. 15-1215, 15-1226 (Fed. Cir. Nov. 16, 2015), the Federal Circuit remanded an IPR to the PTAB because the language of the PTAB’s nonobviousness decision left open the possibility that it impermissibly declined to consider an exhibit as evidence of the background understanding of skilled artisans.

Ariosa petitioned for IPR against Verinata, arguing that claims for identifying a genetic abnormality associated with Down Syndrome were obvious. After institution, in a declaration accompanying its Reply, Ariosa’s expert relied on a brochure not previously presented in its original IPR petition that showed the background knowledge a skilled artisan would have possessed regarding DNA indexing. The Board held that Ariosa failed to demonstrate how one of ordinary skill in the art would combine the disparate elements. In doing so, the Board accorded the expert testimony no weight, noting that Ariosa did not explain why the brochure could not have been presented as part of the asserted ground of unpatentability with the petition.

On appeal, the Court explained that it would be impermissible for the PTAB to refuse to consider an exhibit as evidence of ordinary skill in the art simply because Ariosa failed to identify the exhibit at the petition stage as one of the pieces of prior art defining a combination for obviousness. And the Court could not discern from the record whether the Board elected not to consider the brochure for that impermissible reason or instead for a permissible one, such as a failure expressly to state the brochure’s relevance. As a result, the Court vacated the PTAB’s decision and remanded the case to the PTAB.