Expectation Of Success Analysis Need Not Be Separate

In Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit recently affirmed a PTAB decision finding certain claims of a patent owned by Elekta Limited ("Elekta") to be unpatentable, even though the PTAB decision had not expressly addressed the expectation of success for the proposed obviousness combination. No. 2021-1985, 2023 WL 6152418 (Fed. Cir. Sept. 21, 2023).

Zap Surgical Systems, Inc. ("Zap") had previously filed a petition for inter partes review challenging U.S. Pat. No. 7,295,648, which relates to an apparatus for providing ionizing radiation treatment to a subject. Id. at *1. The PTAB subsequently issued its Final Written Decision, concluding that all the challenged claims were unpatentable as obvious. Id. at *2. On appeal, Elekta challenged the Board's findings related to (1) motivation to combine, and (2) reasonable expectation of success. Id. at *3. In particular, Elekta claimed that the Board had erred as a matter of law by failing