MoFo Perspectives: Success with Reasonable Expectation of Success

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 3^rd, 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.