November 23, 2015

Connect the Dots: Petition That Fails to Explain How Prior Art Could Be Combined Can Doom a PTAB Proceeding

While claim charts are often used to compare prior art to challenged patent claims, simply submitting those claim charts as part of a petition to the Patent Trial and Appeal Board (PTAB), without more, could lose your case.

In CareCloud Corp. v. AthenaHealth, Inc., the petitioner sought to invalidate several patent claims as obvious over various prior art references. However, rather than articulate how those references would be combined or modified to reach the claimed invention, the petition simply provided a claim chart with "several disparate disclosures from several different references as corresponding to the same claim limitation." Noting this deficiency, the PTAB refused to "provide sua sponte rationales for modifying" the asserted references and held that the petitioner failed to carry its burden. While the petitioner attempted to rectify this problem in its reply, the PTAB stated that doing so "violate[s]" PTAB rules that prohibit new arguments at that stage. Since CareCloud was bound to its inadequate claim chart, the PTAB rejected its obviousness challenge.

The Facts of CareCloud

In this case, CareCloud challenged the patentability of U.S. Patent No. 7,617,116 (the ’116 patent) as part of a covered business method patent review (CBM). The ‘116 patent relates to "a medical practice management and billing automation system" designed to reduce "errors in health insurance claims submitted by medical practices to insurance companies." CareCloud, as the petitioner, challenged several of the ’116 patent claims as obvious in view of four prior art references, as well as a challenge to all of the claims of the ’116 patent under section 101.

While CareCloud was successful in its section 101 challenge, its section 103 argument suffered from a fatal flaw. Specifically, the PTAB noted that an obviousness analysis "[n]ormally" includes "an analysis as to why modifying the prior art reference to meet that claim limitation would have been within the abilities of one of ordinary skill, usually with support from another reference." However, CareCloud failed to provide that analysis: "For numerous claim limitations, Petitioner. . . , by placing several disparate disclosures from several different references as corresponding to the same claim limitation in the claim chart, appears to be inviting the Board to make such a determination on its own." The PTAB continued: "Petitioner appears to be further inviting the Board to provide sua sponte rationales for modifying that specific prior art to meet those differences, presumably based on those same disclosures identified in the claim chart. We decline to perform such sua sponte analyses, as the burden is on Petitioner, and not on the Board, to show that a claim is unpatentable, and for the Board to do otherwise would impermissibly place us in the role of advocate and not arbiter."

The PTAB further considered an interpretation of the petition that was more favorable to the CareCloud — that a skilled artisan would have combined "the entirety of the teachings" of the prior art references. Recognizing that such an analysis might be sufficient "in certain circumstances," the PTAB ruled that, in this case, "merely folding wholesale each of the separate teachings into a single system would not render any claim obvious, because Petitioner has not shown adequately that certain claim requirements are taught by any of the references, even given such wholesale incorporation." As a result, CareCloud’s petition, which "merely maps the claim requirements to elements disclosed individually in the three references, without providing an adequate rationale to explain why or how the disparate elements predictably would have been combined by a [person of ordinary skill in the art] to meet the claim limitation at issue," failed to show that the challenged claims were unpatentable.

Recognizing this deficiency, CareCloud submitted a reply that attempted to address these issues. However, the PTAB noted that CareCloud’s submission relied on positions that were not in the original petition. As such, those arguments constituted "new arguments" that are prohibited by PTAB rules. The PTAB further observed that CareCloud’s reply "does not explain sufficiently why "a skilled artisan would have combined the prior art references to meet the claim limitations." Therefore, in view of these deficiencies, the PTAB held that CareCloud failed to carry its burden of showing that the challenged claims were unpatentable under section 103.

Takeaway

Petitioners should take care that an obviousness case connects all of the dots. In particular, a petition must include all the elements of an obviousness challenge — including an explanation of how a skilled artisan would modify the prior art to arrive at the claimed invention. Because these details cannot be provided at a later stage, their omission could doom your case.

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