smaXtec Inc. et al. v. ST Reproductive Technologies, LLC et al.

A Delegated Rehearing Panel of the Director granted review of the Final Written Decision and modified it to hold that Petitioner did not prove by a preponderance of the evidence that dependent claims 4, 6, and 18-20 are unpatentable. The record did not support the obviousness findings for the Trevarthen and Laitinen grounds because Dr. Brown-Brandl never explained why or how treatment or health information would have been put into the logical expression to indicate illness, and the Board's claim 18 finding rested on a mistaken understanding of Patent Owner's arguments. Obviousness findings for a dependent claim need record support specific to the added limitation; a rationale shown for claim 1 and a bare cross-reference to it will not carry the claim. The decision also shows a Delegated Rehearing Panel reconciling the Board's findings where the parties agreed the Board erred. Decision under review: the Final Written Decision (Paper 49) held claims 1-4, 6, and 17-20 of the '206 patent unpatentable. Patent Owner sought review only of dependent claims 4, 6, and 18-20, and the Director delegated review to a Delegated Rehearing Panel because the parties agreed the Board erred as to claim 18 and the claim 6, 19, and 20 findings needed reconciling. Trevarthen grounds, claim 4: the Board's support for using stored health (treatment) information in the logical expression to indicate illness cited only testimony about temperature and milk production. The other cited passages show only that treatments can be stored and that milking and temperature data can signal illness, so they do not show why treatment information would be used in a logical expression. Petitioner's reliance on the Board's claim 1 discussion of multiple parameters was unpersuasive. Laitinen grounds, claim 4: the Board cited only paragraphs 198 and 199 of the Brown-Brandl declaration, which, like paragraph 135, address temperature and milk production and not health information. Petitioner's argument that the Board referred back to its limitation 1[E] and 1[F] analysis merely repeats the Board's conclusion without identifying record support. Claims 6 and 18-20: claim 6 depends from claim 4 and fails with it under the Laitinen grounds. Claim 18 was found unpatentable on a mistaken premise that Patent Owner relied on its claim 1 arguments rather than its claim 4 arguments, which Petitioner conceded. Claim 18 therefore fails consistent with claim 4, as do dependent claims 19 and 20. Order: the Board's unpatentability determinations for claims 4, 6, and 18-20 are not sustained, and the Board's findings on claims 1-3 and 17 are not disturbed. KEY QUOTE: "None of this material tends to show how or why it would have been obvious to use treatment information in a logical expression to indicate illness." (Paper 54, p. 6)