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MoFo Perspectives: Success With Reasonable Expectation Of Success (Podcast) – Patent

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Reasonable expectation of success continues to be an important
requirement in any obvious analysis whether during examination or
before the Patent Trial and Appeal Board. The PTAB’s recent
Final Written Decision in Juniper Networks v. Correct
Transmission
, IPR2021-00682, highlights the consequences for
patent challengers at the PTAB if the requirement is not met and
paints a path for patent applicants to overcome obviousness
rejections during prosecution.

Transcript

[00:00:00] Intro/Outro: Welcome to MOFO
Perspectives, a podcast by Morrison Forester, where we share the
perspectives of our clients, colleagues, subject matter experts,
and lawyers.

[00:00:13] Mehran Arjomand: Hello and welcome
to Morrison Forester’s podcast series on patent perspectives.
My name is Mehran Arjomand, and I’m a partner in Morrison
Forester’s Patent Group. This series is designed to provide
legal insight to patent stakeholders. Each podcast is designed to
be short and incisive. Today, I’ll be speaking about an
important requirement in any obviousness analysis, namely,
reasonable expectation of success. On October 3rd, just
a few weeks ago, the Patent Trial and Appeal Board issued a
decision in Juniper Networks v. Correct Transmission,
IPR2021-00682, that highlights the importance of this requirement
in challenging patents as obvious. As the challenger, Juniper,
found out, bad things can happen if the requirement is not met, but
the decision’s import is much, much broader. It paints a path
for patent applicants to beat back obviousness rejections during
examination.

Before we get into the details, let me provide you with some
quick background on reasonable expectation of success. The Court of
Appeals for the Federal Circuit has held that an obviousness
determination requires finding that an ordinarily skilled artisan
would’ve been motivated to combine or modify the teachings in
the prior art and would’ve had a reasonable expectation of
success in doing so.

This requirement applies both to patent challengers, such as
Juniper, trying to invalidate an issued patent, and to examiners in
rejecting pending applications. Now, normally the reasonable
expectation of success requirement does not present a big obstacle
for electrical and mechanical inventions. If an artisan
would’ve been motivated to combine the teachings of the two
electric circuits, let’s say, then she would have a reasonable
expectation of success in doing so. After all, general knowledge on
electrical circuitry is so extensive that the skilled artisan would
likely be able to successfully combine the two teachings. In other
words, reasonable expectation of success is easier to meet when the
technical field that issue is predictable.

So, does that mean that you can ignore the reasonable
expectation of success requirement in such “predictable
fields?” Absolutely not. There the Juniper case, the patent
issue related to a data communication network. The invention
provided backup nodes to replace primary nodes in case of failure.
Juniper filed an inter partes review petition, arguing
that patent claims were obvious based on a combination of
references, including Kuo and Balakrishnan.

Kuo apparently disclosed all the claim limitations except for a
recitation that backup nodes periodically synchronize content with
the primary nodes. Such synchronization was disclosed by
Balakrishnan. Yet, Jupiter did not mention, let alone provide
evidence, in its petition and accompanying expert declaration, on
the reasonable expectation of success in combining these two
references.

After the patent owner raised the lack of evidence, Juniper
pointed to its evidence that there were benefits to periodic
synchronization, such as reducing the risk of potential loss. But
to the Board that went to motivation, not reasonable expectation of
success. It said, “Although forgoing contentions may address
reasons or motivations to modify Kuo or combine the teachings of
Kuo and Balakrishnan, Petitioner does not explain why such
contentions and any underlying cited evidence, even if undisputed,
show that the skilled artisan would have had a reasonable
expectation of success in modifying Kuo’s particular network to
periodically synchronize forwarding tables given the particular
design of Kuo’s system and given the complex nature of virtual
private local area networking technology and computer networking
technology generally.”

Other arguments were raised. Juniper asked, what about evidence
that periodic synchronization in general is simple or easy to
implement? That was also insufficient for the Juniper
Board. There needed to be evidence relating to likelihood of
success in modifying Kuo’s particular network with periodic
synchronization. Because Juniper had not provided such evidence
tailored to Kuo’s disclosure, the Board ruled against
Juniper.

And what if the references identify a common problem or a single
critical parameter that makes them correlate? Citing a Federal
Circuit case called Inland Steel, Juniper argued such a
correlation existed between the two references and thus gives rise
to a reasonable expectation of success. But again, the Board pushed
back. It held that Inland Steel does not hold that
“the mere allegation of similarities in two references
establishes a reasonable expectation of success in combining
them.”

Now there are multiple takeaways here. First, the
Juniper decision should be a warning to patent challengers
in the electrical and mechanical arts. Provide evidence or at least
discussion of reasonable expectation of success. Don’t assume
that you can handwave the requirement because these arts are
“predictable.”

Even in predictable arts, there can be a continuum of
complexity. In Juniper, the Board repeatedly emphasized
the complexity of both computer networking technology and the Kuo
reference itself.

Second, such evidence should be presented in the petition.
Trying to introduce this evidence later in the proceeding is
difficult, although not impossible. Juniper did not submit an
expert declaration after the issue was raised. That was a missed
opportunity because the board highlighted its absence. Instead,
Juniper tried to have its expert on cross-examination provide the
missing evidence. But as we all know, cross-examination is not
always a friendly venue, and in this case, it did not appear to
allow the expert to present evidence in the best possible light for
Juniper.

Third, any evidence on reasonable expectation of success should
be tailored to the references themselves. General statements that
one teaching would be successfully applied to another may fall
flat, especially if the technology is complex. The Board repeatedly
emphasized showing a reasonable expectation of success in modifying
Kuo’s “particular network.”

While these practice tips relate to post grant proceedings, they
are readily transferable to patent applicants in the electrical and
mechanical arts. In these arts, examiners routinely combine
references either without addressing reasonable expectation of
success or providing bare statements on the issue. In response,
most applicants amend or argue against motivation to combine. But
don’t give examiners a free pass on reasonable expectation of
success. Push against the lack of showing, or challenge these bare
statements by emphasizing the complexity of the technology field.
And then top it off with argument or even evidence of no reasonable
expectation of success. Obviousness is typically a patent
applicant’s biggest hurdle, so be sure to use all the tools in
your toolkit as a patent owner did in Juniper.

Thank you for listening.

[00:08:40] Intro/Outro: Please make sure to
subscribe to the MoFo Perspectives podcast so you don’t miss an
episode. If you have any questions about what you heard today or
would like more information on this topic, please visit
mofo.com/podcasts. Again, that’s mofo, m-o-f-o.com/podcast.

Because of the generality of this update, the information
provided herein may not be applicable in all situations and should
not be acted upon without specific legal advice based on particular
situations.

© Morrison & Foerster LLP. All rights reserved

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