Federal Circuit to PTAB: No Short Cuts Allowed | The National Law Review
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`Federal Circuit to PTAB: No Short Cuts Allowed
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`Brad M. Scheller
`Vincent M. Ferraro
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`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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`Tuesday, April 25, 2017
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`Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s
`obviousness determination regarding a Securus Technologies patent directed to systems and
`methods for reviewing conversation data for certain events and bookmarking portions of the
`recording when something of interest is said, finding that the Board failed to provide any
`explanation for its decision with respect to certain challenged claims.
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`Securus Techs., Inc. v. Global Tel*Link Corp. (Appeal Nos. 2016-1992 and -1993) involved the appeal of
`two inter partes review (“IPR”) proceedings initiated by Global Tel*Link Corp. against Securus
`Technologies, Inc.’s U.S. Patent No. 7,860,222 (the “’222 Patent”).  The Board issued a Final Written
`Decision in both IPRs, finding all claims of the ’222 Patent unpatentable as obvious over the cited
`prior art references.  In finding some of the dependent claims to be obvious, the Board provided only
`a generic sentence:  “After consideration of the language recited in the [the claims], the Petition,
`the Patent Owner Response, and the Petitioner’s Reply, as well as the relevant evidence discussed in
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`https://www.natlawreview.com/article/federal-circuit-to-ptab-no-short-cuts-allowed
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`1/12/2018
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`Voip-Pal Ex. 2065
`IPR2016-01198 and IPR2016-01201
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`

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`Federal Circuit to PTAB: No Short Cuts Allowed | The National Law Review
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`Page 2 of 5
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`Federal Circuit to PTAB: No Short Cuts Allowed
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`those papers, we find that one of ordinary skill in the art [“POSITA”] would have considered these
`dependent claims obvious over [the asserted art].”  Slip Op. at 5-6.
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`On appeal, Securus argued, among other things, that the Board failed to articulate any reason
`supporting its decision that certain dependent claims were unpatentable.  The Federal Circuit
`agreed.
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`The Court first reiterated that the Board must “make the necessary findings and have an adequate
`evidentiary basis for its findings” and “examine the relevant data and articulate a satisfactory
`explanation for its action including a rational connection between the facts found and the choice
`made.”  Slip Op. at 13-14 (internal citations omitted).  While perfect explanations are not required,
`“it is not adequate to summarize and reject arguments without explaining why the [Board] accepts
`the prevailing argument.”  Id. at 14.  That is, the “Board must provide some reasoned basis for
`finding the claims obvious in order to permit meaningful review by this court.”  Id.  As such, the
`Federal Circuit held that the Board’s failure to provide any reasoning for its decision that certain
`dependent claims were unpatentable was insufficient and, therefore, remanded the case for further
`proceedings.
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`This case highlights the importance of the Board to adequately explain its findings.  Practitioners
`should take extra care in reviewing decisions by the Board in post-grant review proceedings to
`ensure all of the Board’s findings are adequately explained, as a failure by the Board to provide
`adequate explanations could create an issue ripe for appeal.
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`©1994-2018 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.
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`Federal Circuit Lifts Bar on Judicial Review of PTAB Time-Bar Determinations
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`https://www.natlawreview.com/article/federal-circuit-to-ptab-no-short-cuts-allowed
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`1/12/2018
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