In Shinn Fu Co. of America, Inc. v. The Tire Hanger Corp., Dkt. No. 2016-2250 (Fed. Cir. July 3, 2017), Shinn Fu appealed the Board's holding in IPR2015-00208 (discussed here), a rare case in which the PTAB granted a motion to amend, and determined that substitute claims 6-10 of USPN 6,681,897 were patentable. The claims are drawn to methods of changing the wheels of vehicles on lifts without the operator having to bend while supporting the wheel. In a non-precedential opinion, the Federal Circuit found the Board's subtractive approach to assessing obviousness (see IPR2015-00208 Final Written Decision at pages 24-26) to be in error, vacating and remanding the case to the Board with instruction to consider obviousness using the additive approach argued by Petitioner. In particular, Petitioner had argued that it would have been obvious to add a hook for hanging a tire to a prior art vehicle hoist, but the Board reasoned that one of skill would not have removed the prior art wheel cradle to add a hook because the cradle provided the benefit of lug nut storage.
On appeal, the court concluded that the Board failed to consider the manner in which Petitioner proposed its obviousness combinations and held that this failure was arbitrary and capricious, leading the court to vacate and remand the case. Petitioner had argued several prior art combinations, asserting that the prior art vehicle lifts of primary references could be modified by adding a wheel hanger to provide support for detached wheels with the motivation to modify the lifts found in minimizing back strain from bending while holding detached wheels. The court found that the Board neglected to address all art combinations argued by Petitioner, instead using a subtractive approach focused on the disclosures of primary references and looking in vain for a motive to remove unclaimed features.
"[T]he Board addressed the prior art references by removing elements from individual references to achieve the resulting combination and found no motivation to combine the references in this manner."
The court's decision provides direction to the Board that it must evaluate the specific obviousness arguments made by a petitioner, and this provides guidance to patent owners to use the same approach in responding to obviousness attacks on its claims.
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