The Federal Circuit Supports the PTAB in Casting a Wider Obviousness Net - Buchanan PTAB Report

The Federal Circuit recently affirmed the Patent Trial and Appeal Board's ("the PTAB" or "the Board") decision invalidating Outdry Technologies Corp.'s ("Outdry") patent.[1] In doing so, the Federal Circuit elaborated on the expansive and flexible standard for establishing the required motivation for combining prior art references in an obviousness analysis.[2] The court clarified that the motivation to combine does not have to be rooted in solving the problem set forth in the challenged patent. In addition, the court found that it is permissible for the Board to expressly adopt and rely on one of the parties' arguments as its own, as long as the Board adequately explains why the reasoning is sound.