Richard G. Taranto
How Judge Taranto decides
Patterns drawn from this judge's own signed orders. Every observation links to the order it came from.
What persuades
On obviousness he demands more than a bare showing that references could be juxtaposed: the question is whether a skilled artisan would have been motivated to combine them, and a reference counts for everything it teaches, not only its preferred embodiment. A motivation-to-combine finding must rest on an explicit, evidence-supported explanation.
“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”
In claim construction he reads the limitations of a claim as cumulative requirements that must all be satisfied, not as a menu of options, and he will not find a claim contradictory or indefinite where it is possible to meet two separate limitations at once. Plain claim language controls unless the specification clearly disclaims or redefines it.
“Claim limitations do not grant options. They state requirements—conditions that must be met for a product or process (as the case may be) to come within the claim’s protected zone of exclusivity. If there are two requirements, and it is possible to meet both, there is no contradiction.”
Procedural preferences
He holds agencies to their own stated reasoning. A reviewing court may uphold a decision of less-than-ideal clarity if the agency's path can be discerned, but it will not manufacture a rationale the agency never gave; when the reasoning is too opaque to review, the proper course is to vacate and remand rather than decide the merits.
“we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned, but we may not supply a reasoned basis for the agency’s action that the agency itself has not given.”
In statutory cases he reasons from text and structure, confining a provision to the temporal or substantive scope its words actually carry and declining to read in limitations or timing requirements the statute does not state. Erroneous agency advice or handbook language cannot displace the statute's clear terms.
“The only temporal aspect of the provision is one that addresses the period “for” which the veteran is to receive benefits. The provision does not use language that addresses the time at which VA must make its reduction decision.”
Cautions
He polices administrative procedure closely: a tribunal may not rest its decision on a factual assertion or theory that surfaced too late for the losing party to respond -- for instance, one introduced only at oral argument. Deciding on a ground the party had no fair chance to meet is a procedural-fairness violation that warrants vacatur.
“the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”
A conclusory obviousness rationale will not survive his review. It is not enough to observe that a skilled artisan presented with two references would understand they could be combined; the decision must articulate why the artisan would have selected and combined those particular references to reach the claimed invention.
“that reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention.”
Signed rulings
A grounded sample of orders signed by this judge, with the verbatim dispositive language.
“For the foregoing reasons, while we affirm the Board’s claim construction, we vacate the Board’s Final Written Decision regarding obviousness of the appealed claims and remand for further proceedings.”
“For the foregoing reasons, we affirm the Board’s final written decision in IPR2013-507, invalidating claims 1–5, 10, 11, 14, 15, and 19–28 and upholding claim 18. We vacate the Board’s decision in IPR2013-508 and remand for further proceedings regarding claims 16 and 17 in accordance with this opinion.”
“For the foregoing reasons, we affirm the Board’s construction and obviousness determinations for claims 1, 6, 8, 20, and 24. We vacate the Board’s denial of the motion to amend, and remand the case for the Board to address the patentability of proposed substitute claims 26 and 27.”
“We reverse the Board’s construction and cancellation of claim 7 of the ’343 patent. We affirm the Board’s cancellation of all other claims at issue in the ’598 and ’343 patents.”
“we affirm the Board’s upholding of claims 14–17 and 34–36; vacate the Board’s cancellation of claim 20 and remand for consideration of that claim under the proper construction; and vacate the Board’s cancellation of claim 3 and remand for appropriate proceedings on that claim.”
“For the foregoing reasons, we vacate the Board’s decision and remand for further proceedings.”
“we affirm the Board’s determinations that claims 1–4 of the ’503 patent would have been obvious, reverse the Board’s determination that claims 5 and 6 would not have been obvious, and affirm the Board’s denial of Belden’s motion to exclude.”
“the Board’s decision on the ’188 patent is reversed in part and vacated in part, and the matter is remanded for further proceedings consistent with this opinion. The Board’s decision on the ’822 patent is affirmed.”
“REVERSED AND REMANDED”
Put Judge Taranto's record to work
Ezel drafts and answers grounded in this exact profile: how Judge Taranto actually rules, not a generic AI guess.
Opens in Ezel Pro. Every answer is grounded in Judge Taranto's own signed orders and cites them.