Polaris Industries, Inc. v. Arctic Cat, Inc. (No. 2016-1807, 2/9/18) (Lourie, O'Malley, Hughes)
February 9, 2018 12:27 PM
O'Malley, J. Affirming in part, vacating in part, and remanding PTAB findings on obviousness in IPRs. “We have never articulated a framework for analyzing whether claims would have been obvious that includes the phrase 'subjective preference' or that permits a tribunal to wholly disregard the significance of prior art teachings based on such a characterization. … There are three specific problems with the 'subjective preference' analysis espoused and applied by the Board. First, by completely disregarding certain teachings as ill-defined 'subjective preferences,' the Board's approach invited the 'distortion caused by hindsight bias' into the fold…. Second, the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention. … Third, the Board's analysis encourages the fact-finder to outright discard evidence relevant both to 'teaching away' and to whether skilled artisans would have been motivated to combine references.” “[E]ven if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.”
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