Weber petitioned for inter partes review (“IPR”) of claims 1–14 of Provisur’s U.S. Patent No. 6,997,089 relating to methods and systems for classifying slices of a food product using an optical image of the slice. The Board concluded that Weber had proved claims 1–10, 13, and 14 were unpatentable as obvious, but not claims 11 or 12. Provisur appeals the Board’s unpatentability determinations and Weber cross-appeals the Board’s determination that claims 11 and 12 are not unpatentable. Provisur first argues that the Board abused its discretion when it denied Provisur’s motion to exclude certain evidence not submitted by Weber in its petition, but the CAFC finds that Weber’s reply evidence properly rebutted Provisur’s arguments, and that Provisur’s argument conflates capability with obligation: Weber could have submitted the evidence with its petition, but nothing obligated it to. Provisur then argues that the Board violated the Administrative Procedure Act (“APA”) by failing to address all of Provisur’s patentability arguments. The CAFC finds that Provisur plainly argued that the prior art did not render obvious a surface-area limitation, and the Board’s analysis does not explicitly address those arguments. The CAFC therefore holds that the Board’s adoption of Weber’s argument and evidence, coupled with its mischaracterization of Provisur’s arguments, precludes the CAFC from engaging in meaningful appellate review and, therefore, violates the APA. With respect to Weber’s cross-appeal, the CAFC finds that the Board erred in considering a Wyslotsky reference alone (rather than in the context of a combination of references presented by Weber in tis petition), and concludes that this error warrants vacatur of the Board’s judgment as to claims 11 and 12. The CAFC further finds that the Board’s findings for claims 11 and 12 are inconsistent with those it made for other claims. Accordingly, the CAFC affirms in part, vacates in part, and remands this case to the Board.
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