Shinn Fu Company of America v. Tire Hanger Corporation, 701 F. App'x 942

Patent owner Tire Hanger owns U.S. Patent No. 6,681,897 directed to methods and apparatuses for temporarily supporting vehicle wheels removed from a vehicle on a hoist; specification emphasizes human operators avoiding bending over.
Shinn Fu petitioned for inter partes review (IPR2015-00208) challenging claims 1–5 as anticipated/obvious under multiple prior-art combinations (Heidle, Komorita, AAPA, OSHA, etc.).
Tire Hanger filed a motion to amend, canceling claims 1–5 and proposing substitute claims 6–10 that expressly recite human involvement and ordered steps; Tire Hanger argued patentability of the amended claims over the instituted prior art and additional references.
Shinn Fu opposed the motion to amend, arguing unpatentability of claims 6–10 based on combinations that included Curran and Conrad (notably an "additive" combination that attaches Conrad’s hanger to prior-art lifts such as Curran or Heidle) and provided motivations to combine.
The PTAB granted the motion to amend, finding the substitute claims patentable, but its Final Written Decision focused on a subtractive analysis of Komorita/Heidle/Conrad and did not meaningfully analyze Shinn Fu’s additive Curran–Conrad combination as presented.
On appeal, the Federal Circuit held the Board’s failure to address Shinn Fu’s specific arguments and combination approach was arbitrary and capricious, vacated the decision, and remanded for further consideration.

Issue	Shinn Fu's Argument	Tire Hanger's Argument	Held
Whether the PTAB adequately considered Shinn Fu’s obviousness arguments against substitute claims 6–10	Board ignored Shinn Fu’s proposed additive combination (e.g., Curran + Conrad) and failed to analyze its motivation to combine	Board considered the primary combinations and Shinn Fu failed to develop/press the Curran–Conrad combination below	The Board erred by not addressing Shinn Fu’s presented combination and motivation to combine; vacated and remanded
Whether the Board’s reasoning was reviewable	Shinn Fu: without analysis of its combination, appellate review is impossible	Tire Hanger: Board need not address every conceivable combination	Court: lack of analysis prevents meaningful review; agency acted arbitrarily and capriciously

In re Lee, 277 F.3d 1338 (Fed. Cir.) (agency action is arbitrary and capricious when it fails to consider an important aspect of the problem)
Motor Vehicle Mfrs. Ass’n v. State Farm, 463 U.S. 29 (U.S.) (agency action arbitrary and capricious when it entirely fails to consider important aspects)
Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir.) (Board must provide adequate analysis to allow meaningful appellate review)
In re Nuvasive, Inc., 842 F.3d 1376 (Fed. Cir.) (remand required where Board failed to articulate a motivation to combine prior art)