Below are PTAB cases and Federal Circuit appeals addressing obviousness arguments of the parties.
Arendi S.A.R.L. v. Apple Inc., Appeal No. 2015-2073 (Fed. Cir. Aug. 9, 2016). The Federal Circuit reversed the Board’s determination that the challenged claims are obvious, because the Board misapplied the law on the permissible use of common sense in an obviousness analysis. The Board determined that the claims were obvious over a single reference, holding that although the reference did not disclose a particular limitation, it would have been reasonable to presume, as a matter of common sense, that the reference would have performed the limitation. The Federal Circuit rejected the Board’s analysis, holding that common sense must be confined to its “proper place in the obviousness inquiry.” The Federal Circuit indicated that (1) common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation, (2) when common sense is used to supply a missing claim limitation, it should only be used when the missing limitation is unusually simple and the technology particularly straightforward, and (3) common sense cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the asserted prior art references.
Volkswagen Group of America, Inc. v. Signal IP, Inc., IPR2015-00968, Paper 6 (PTAB Aug. 25, 2015). To support an argument of obviousness, petitioner must make its obviousness evaluation explicit. It can be important to identify a reason that would have prompted one skilled in the art to combine the elements in the way the claimed invention does. Rather than providing articulated reasoning with rational underpinnings as to why one skilled in the art would have modified the references, petitioner only provides conclusory motivation contentions. Petitioner’s argument lacks any reason, absent impermissible hindsight, why one skilled in the art would have combined the applied references to arrive at the claimed features.
Coalition for Affordable Drugs III LLC v. Jazz Pharmaceuticals, Inc., IPR2015-01018, Paper 17 (PTAB Oct. 15, 2015). The Board was not persuaded by an obviousness challenge set forth in the petition. The Board indicated that petitioner “glosses over the differences between the references and does not address the specific language of the steps in the independent claims, in context, to explain why it would have been obvious for one of ordinary skill to combine the prior art references in the manner recited.” Comparing the arguments in the petition versus patent owner’s arguments in the preliminary response, the Board explained that “Petitioner does not provide adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would made modified” the applied references to achieve the features of the challenged claims.
Samsung Elecs. Co., Ltd. v. Imperium (IP) Holdings, IPR2015-01233, Paper 14 (PTAB Dec. 1, 2015). The Board denied institution for two obviousness challenges that were presented as alternatives to separate anticipation challenges based on two references. Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that the challenged claim would have been obvious over either reference if it fails to show that either reference does not anticipate. In order to demonstrate obviousness, petitioner must identify any differences between the claimed subject matter and the prior art. However, petitioner does not identify with sufficient specificity what limitations are missing from either reference that a person of ordinary skill in the art would have modified those references to supply. Instead, petitioner merely suggests that any element of the claim, if found to be missing from either reference, would have been obvious to a person of ordinary skill in the art under § 103 over those same references. The obviousness analysis requires more than an ipse dixit assertion that everything in a reference was also well known in the art. For any limitation petitioner asserts is well-known, there needs to be evidence of that knowledge and evidence of a rationale for modifying the teachings of the reference in accordance with that knowledge.
Sensus USA, Inc. v. Certified Measurement, LLC, IPR2015-01439, Paper 13 (PTAB Dec. 11, 2015). The Board denied institution for an obviousness ground over one reference that was presented as an alternative to an anticipation ground based on that reference. The Board indicated that petitioner did not provide any meaningful analysis of its obviousness challenge independent of its anticipation challenge. Instead, petitioner and its expert relied on a blanket assertion that the asserted reference “alone, or in combination with the knowledge of a person of ordinary skill in the art, discloses all the recitations of the Challenged Claim…and either anticipates or renders obvious the Challenged Claim.” An obviousness analysis requires more than an ipse dixit assertion that everything in a reference was well known in the art. Failure to present evidence of that knowledge and evidence of a rationale for modifying the teachings of a reference in accordance with that knowledge does not comply with 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5).
Atoptech, Inc. v. Synopsys, Inc., IPR2014-01145, Paper 24 (PTAB Jan. 19, 2016). The Board disagreed with patent owner’s argument that the petition did not articulate the differences between the claims and the prior art. The Board determined that petitioner met its burden of demonstrating the differences between the claims and the prior art, finding that when one prior art reference does not disclose a claim feature, petitioner explained that another prior art reference discloses that claim feature, and then petitioner provided reasons for modifying and combining the relied-upon references.
Oracle Corp. v. Crossroads Systems, Inc., IPR2014-01209, Paper 77 (PTAB Jan. 29, 2016). The Board disagreed with an obviousness challenge on the basis that petitioner and its expert “fail to account for the prior art as a whole and improperly pick and choose from the references in their reasoning to support their contention that the proposed combination of Bergsten and Hirai renders the claims obvious.” The Board indicated that “[t]his type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected.”
Owens Corning v. CertainTeed Corp., IPR2014-01397, Paper 37 (PTAB Mar. 8, 2016). The Board held that the age of a cited reference, in and of itself, does not negate its use in determining obviousness. The older reference was approximately 60 years older than two other current references which were combined with the older reference. The Board was not persuaded that the older reference’s age or subject matter would have prevented a person of ordinary skill in the art from combining it with the current references. Even though there is a temporal gap, a skilled artisan is presumed to have been aware of the older reference (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (a “person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.”)).
Securus Techs., Inc. v. Global Tel*Link Corp., IPR2015-00155, Paper 30 (PTAB Apr. 7, 2016). The Board determined that the challenged claims are not unpatentable over the combination of two references asserted by petitioner. The cursory assertion that the references are drawn from the same broadly characterized field provides insufficient analysis concerning why and how a person of ordinary skill in the art would have modified or combined the prior art in the manner asserted, and inadequately articulates “reasoning with some rational underpinning to support the legal conclusion of obviousness.” The Board also indicated that petitioner’s “perfunctory analysis is effectively rebutted” by patent owner’s declarant, who testified that the asserted references are directed to unrelated concepts and to very different architectures that are not easily combined. The Board credited the testimony of patent owner’s declarant more strongly than that of petitioner’s declarant because patent owner’s declarant provided explicit reasoning to support his opinion that the asserted references are “concerned with different implementation settings, rely on different architecture structures, have technical incompatibilities, and are drawn from different fields.”
Securus Technologies, Inc. v. Globel Tel*Link Corporation, IPR2016-00267, Paper 8 (PTAB June 3, 2016). The Board denied the petition because the petitioner failed to establish how the claims are obvious over the asserted references. The Board rejected the petitioner’s rationale to combine the references because there was “no evidence of record that a person of ordinary skill in the art would have expected the [proposed] problem to exist at all.” The Board found there was no motivation to combine the references to create a system with the claimed features.
Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-00035, Paper 23 (PTAB Aug. 12, 2016). The Board rejected petitioner’s argument that the challenged claims were obvious because a prior art technique “could be applied to the problem at hand.” The Board determined that the argument was conclusory and insufficient because petitioner did not provide argument or evidence as to why one skilled in the art would have applied the prior art technique. Conclusions with respect to obviousness must find support in the evidence of record. An understanding that something could be applied to the problem at hand does not establish that the challenged claims are unpatentable as obvious. Stating what one of skill in the art would have known or could have done to meet a claim limitation is not sufficient to establish that a claimed invention would have been obvious.
Nautilus Hyosung Inc. v. Diebold, Inc., IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016). The Board denied institution of an obviousness challenge because the petition did not establish why one skilled in the art would have modified the references to arrive at the claimed invention. “An assertion that something could be done does not articulate a reason why something would be done by one of ordinary skill in the art at the time of the invention and, therefore, raises a specter of impermissible hindsight bias in an obviousness analysis.” (emphasis original) The Board indicated that the testimony of petitioner’s expert does not present evidence or otherwise provide sufficient factual corroboration to support his opinion of obviousness.
Microsoft Corp. v. Parallel Networks Licensing, LLC, IPR2015-00483, Paper 81 (PTAB Aug. 11, 2016). The Board was not persuaded by petitioner’s obviousness challenges because petitioner and its declarant did not explain why one skilled in the art would have modified a primary reference to include the proposed modifications. Even accepting the declarant’s assertions that the proposed modification was known, and had certain known advantages, neither the declarant nor petitioner explains why a person of ordinary skill in the art would have modified the primary reference to include the allegedly obvious feature. Neither petitioner nor the declarant provide sufficiently persuasive evidence that the proposed new feature provides any advantage not already present in primary reference, other than it would meet the limitations of the claims of the challenged patent. This type of hindsight-based reasoning is prohibited in an obviousness analysis.