Addressing for the first time the issue of whether the Patent
Trial and Appeal Board (PTAB) may rely on an inter partes
review (IPR) petitioner's arguments and adopt its position
wholesale, the US Court of Appeals for the Federal Circuit upheld a
PTAB ruling essentially based on the petitioner's submissions,
and found that the claims of the challenged patent were obvious in
view of prior art and that there was sufficient motivation to
combine the prior art references. Outdry Tech. Corp. v. Geox
S.P.A., Case No. 16-1769 (Fed. Cir., June 16, 2017) (Moore,
J).
Geox filed an IPR petition against a patent owned by Outdry
Technologies on the basis that Outdry's patented methods for
waterproofing leather were obvious in view of prior art. The
challenged patent disclosed that prior art methods of waterproofing
leather clothing and shoes consisted of sewing or gluing a
semi-permeable membrane inside the leather around the
membrane's perimeter. The patent specification further
