In Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024), the Federal Circuit upheld the Patent Trial and Appeal Board's (PTAB) decision that Voice Tech’s U.S. Patent No. 10,491,679 was unpatentable as obvious. Unified Patents, an entity paid by its members to counteract non-practicing entities (NPEs), had challenged the patent. The PTAB found the patent's claims (1-8) obvious over two prior art references, Wong and Beauregard, and denied Voice Tech’s rehearing request. The Federal Circuit's decision addressed several key issues, including waiver, claim construction prejudice, and obviousness.

Key Legal Issues and Holdings:

1. Waiver of the Right to Appeal:
   • Issue: Unified Patents argued that Voice Tech forfeited its claim construction arguments by not including them in its request for rehearing before the PTAB.
   • Holding: The Federal Circuit rejected this argument, clarifying that not re-raising an argument in a rehearing request does not forfeit the right to appellate review. The court focused on statutory provisions (35 U.S.C. §§ 141(c) and 319) and regulations (37 C.F.R. § 42.71(d)), which do not require all arguments to be reiterated in a rehearing request. This distinction from the non-precedential 2019 Polycom case is significant for future cases.
2. Claim Construction Prejudice:
   • Issue: Whether Voice Tech’s failure to demonstrate how its proposed claim constructions would affect the obviousness determination precludes appellate review.
   • Holding: The Federal Circuit declined to consider the merits of the claim construction arguments because Voice Tech did not show how a different construction would affect the judgment. This emphasizes the importance of linking claim construction to the impact on the overall decision.
3. Obviousness – Scope of the Prior Art:
   • Issue: Voice Tech challenged the PTAB’s findings on whether prior art disclosed certain claim limitations.
   • Holding: The Federal Circuit affirmed the PTAB’s findings, stating that the PTAB had justification based on the references and expert testimony. This reinforces the deference given to the PTAB on factual determinations related to prior art.
4. Motivation to Combine and Hindsight Bias:
   • Issue: Voice Tech contended that there was inadequate evidence of motivation to combine the prior art references.
   • Holding: The court found substantial evidence supporting the PTAB’s finding of a motivation to combine, primarily based on expert testimony from Unified Patents. The court emphasized that there was no persuasive evidence of hindsight bias or abuse of discretion.

Implications for Practitioners:

1. Rehearing Requests and Waiver: This case underscores that failing to re-raise arguments in a rehearing request does not inherently waive those arguments for appeal. Practitioners should, however, clearly distinguish between issues that need re-raising and those sufficiently addressed.
2. Claim Construction: When challenging or defending claim construction, it is critical to articulate how proposed constructions would influence the ultimate legal determinations, such as obviousness.
3. Evidence in Obviousness Challenges: The decision highlights the importance of substantial evidence, especially expert testimony, in supporting PTAB findings on both the content of prior art and the motivation to combine references.

Conclusion:

The Federal Circuit’s ruling in Voice Tech Corp. v. Unified Patents, LLC provides valuable insights into the nuances of patent appeal procedures, the significance of claim construction, and the evidentiary standards for obviousness determinations. Legal professionals should take note of these aspects to better navigate the complexities of patent litigation and appeals.