The court vacated and remanded the PTAB’s finding that the petitioner Ariosa failed to prove that the patent claims at issue were obvious.  Specifically, the PTAB held that Ariosa’s Petitions were lacking because they failed to explain how one of ordinary skill in the art would have combined elements.  The PTAB would not consider a reference to a brochure (Ex. 1010) which Ariosa contended showed the background knowledge a person of ordinary skill in the art would have possessed regarding the DNA indexing at the relevant time.  The Federal Circuit reviewed the PTAB’s statements and concluded that it was unclear why the PTAB refused to consider the brochure: it could have been relying on a legally improper ground that the petitioner had not identified it in its petition as one of the pieces of prior art defining a combination for obviousness or it could have found that, factually, the brochure was inadequate to prove Ariosa’s obviousness case.  Because the determination of the Board’s reason for excluding the brochure would involve factual issues, the court vacated the PTAB’s nonobviousness finding and remanded for further determinations. 

Ariosa Diagnostics v. Verinata Health, Inc., Case Nos. 2015-1215, -1226 (November 16, 2015); Opinion by: Taranto, joined by Prost and Wallach; Appealed From: Patent Trial and Appeal Board. Read the full opinion here.

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