No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

Written by: Baiyu Zhu and Jacob R. Rosenbaum

SAGE PRODUCTS, LLC v. STEWART [OPINION]

Before Reyna, Cunningham, and Stark.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: The Board did not abuse its discretion by relying on evidence beyond the prior art references to determine how a POSITA would understand a reference.

Sage appealed the Board’s determination in an IPR that challenged claims of its patents were anticipated and obvious in view of the prior art.  On appeal, Sage argued that the Board abused its discretion by creating arguments not raised by the petitioner and by considering evidence outside the prior art references.

The Federal Circuit held that the Board did not abuse its discretion by permitting the petitioner to reply to arguments raised by Sage in its patent owner response.  Further, it was not improper for the Board to rely on evidence outside the prior art, including both parties’ expert testimony to determine what a POSITA would know.  Finally, the Federal Circuit held that even if the Board’s reference to evidence outside the prior art was in error, it was harmless and did not prejudice Sage.  Therefore, the Board committed no procedural error, and the decision was affirmed. 

Editor: Sean Murray