by Dennis Crouch
LG v. Iancu, stems from an obviousness determination by the PTAB in its IPR of LG’s U.S. Patent No. 7,664,971. On appeal, LG argued that the PTAB had failed to explain its decision as required by the Administrative Procedures Act. In a silent commentary on the current state of patent law, the Federal Circuit has affirmed the PTAB decision without issuing any opinion or explanation for judgment.
The ’971 patent claims both an apparatus and method for controlling power to the cores of a multi-core processor. In its decision, the board gave an explanation for rejecting claim 1 (the apparatus), but not for the method claim 9.
In oral arguments, Judge
Hughes Chen noted how the patentee had intentionally focused on procedure rather than merits — since LG doesn’t really have an argument for why claim 9 is different. That merits conclusion may have driven the decision here.
In IPR cases, the duty is on the PTAB to justify its cancellation of each claim. In Securus, the Federal Circuit actually faced a similar situation and came to the opposite conclusion. In particular, in that case, the patentee did not independently argue patentability of several of the dependent claims, and so the Board simply held them invalid along with the rest. On appeal, the Federal Circuit reversed — holding that the Board must articulate a reason for every claim being cancelled.
Here, the Board failed to articulate any reasoning for reaching its decision as to these claims. While the Board need not expound upon its reasoning in great detail in all cases … it must provide some reasoned basis for finding the claims obvious in order to permit meaningful review by this court.
One difficulty for LG in this case is that that the Securus decision is nonprecedential — thus this new panel is not bound to follow that decision. And, perhaps the court is looking to preserve its internal stability by issuing this decision without judgment. Of course, that is an improper use of R.36 no-opinion-judgments that are only permitted by Federal Circuit rule when an explanatory opinion “would have no precedential value.” Here, rejecting or modifying the analysis of a prior Federal Circuit decision fits the bill of precedential value.