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Obviousness – What is Required to Show a Proper Motivation to Combine?

Insights Obviousness – What is Required to Show a Proper Motivation to Combine? Donald L. Jackson · June 5, 2024

While the nonprecedential decision in Google v. Sonos, CAFC Appeal No. 2023-1259, May 23, 2024, is not itself groundbreaking.  It provides a useful backdrop to consider how the Federal Circuit analyzes whether a patent challenger has identified a proper motivation to combine references in an obviousness analysis.

The Federal Circuit analyzed obviousness in the context of an appeal from a PTAB IPR final written decision.  The Court analyzed whether the patent challenger, Sonos, provided an adequate basis to combine the teachings of two references (the “McMillin” and “Baker” references).  The CAFC ruled that Sonos met that evidentiary burden.

In IPR2021-00964, Sonos challenged the validity of certain claims of U.S. Patent No. 10,229,586 (“the ‘586 patent”).  The ‘586 patent described and claimed a system and method in which a transmitter listens to an RF communication channel and waits a delay period before transmission.  The listening and delay period “reduc[e] the chance of packet collisions,” and a “delay period is programmed into each repeater.”  Slip Opinion (“Opinion”), 2.  According to the ‘586 patent, the listening and delay period reduced the chance of packet collisions.  ‘586 patent, col. 11:36-50.

In its petition, Sonos argued that a POSITA would have been motivated to combine McMillin’s collision-avoidance techniques with Baker’s network configuration to reduce “the risk of message collision, garbling, and corruption.”  Opinion, 3.  Google argued that Sonos’ motivation to combine McMillin and Baker was too generic and was not tethered to the specific language of the delay value in the claims.  Opinion, 4.

The Federal Circuit began its analysis by noting that the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), rejected “rigid rules” for establishing obviousness.  Opinion, 5.  The court also quoted its earlier decision in Intel Corp. v. Qualcomm Inc., 21 Fed. 4th 784, 797 (Fed. Cir. 2021), where it stated that a motivation-to combine “rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.”  “Rather, ‘generic’ or ‘conclusory’ analysis is insufficient when it bears ‘no relation to any specific combination of prior art elements . . . from specific references’ and [does]n’t explain why a skilled artisan would have combined them ‘in the way the claimed invention does.’” Id. (emphasis in original) (quoting ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)).

In ActiveVideo, Verizon’s expert on the motivation to combine issue testified that:

The motivation to combine would be because you wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before.

ActiveVideo, 694 F.3d at 1328.  The Court in Google v. Sonos distinguished ActiveVideo because “Sonos and its expert ‘indicated precisely how and why a skilled artisan would have combined the references.’”  Opinion, 5.  The Court’s analysis turned on the fact that Sonos and its expert explained “how” and “why” a POSITA would have made the combination and why a POSITA would have made the combination.

The Court also distinguished its earlier decision in Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008).  According to the Court, “[i]n Innogenetics, we concluded that expert testimony that ‘merely list[ed] a number of prior art references and then conclude[d] with the stock phrase to one skilled in the art it would have been obvious to perform the [claims]’ was insufficient to support a determination of obviousness.”  Opinion, 6 (citing Innogenetics, 512 F.3d at 1373).

The question is where is the line between a motivation to combine that is too generic and one that is adequate to support an obviousness determination?

Clearly, the facts in Innogenetics and ActiveVideo do not support a proper motivation to combine.  Listing prior art references (even if in the same technology field) and concluding that it would have been obvious to combine those references is wholly inadequate.  Similarly, alleging that a POSITA would have made the combination because the POSITA “wanted to build something better,” or make a system that was “more efficient” or had “more features” is clearly inadequate as well.

But does indicating “how” and “why” a POSITA would have made the prior art combination sufficiently avoid an improper hindsight analysis or satisfy the Supreme Court’s guidance in KSR?

Indicating “how” a combination of prior art lines up with the claims is certainly based on hindsight.  The patent challenger is specifically relying on a secondary reference to fill a gap in the claims not disclosed or suggested by the primary reference.  Thus, the “how” prong of the Federal Circuit’s analysis does not guard against hindsight.  In fact, it is based on hindsight.

The question becomes whether a patent challenger has properly identified “why” a POSITA would have made the prior art combination.

Sonos argued that a POSITA would have been motivated to combine McMillin’s collision-avoidance techniques with Baker’s network configuration to reduce “the risk of message collision, garbling, and corruption.”  Opinion, 3.  Rather than having an expert render unsupported opinions about the motivation to combine, Sonos relied on teachings from the secondary reference, McMillin, as the motivation to combine the listening and delay features of McMillin with Baker.  IPR2021-00964, Petition at 57.

Reliance on teachings from the prior art comports with the Supreme Court’s guidance in KSR.  In KSR, the Court found the motivation to combine references from the cited prior art.  KSR, 127 S. Ct. at 425 (“The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau put it would have been obvious to a person of ordinary skill.”).

The question not addressed in Google v. Sonos is how a patent challenger properly supports a motivation to combine that is not based on “precise teachings directed to the specific subject matter of the challenged claims” and instead relies upon “the inferences and creative steps that a person of ordinary skill in the art would employ.”  KSR, 127 S. Ct. at 1741.  Most often, such a motivation to combine is based on expert testimony.  The credibility of the expert becomes key in the analysis.  Ultimately, courts and the PTAB are left to weigh competing expert analyses and credit the testimony that makes the most sense to them.

The better course for a patent challenger is to identify teachings from the prior art that support the motivation to combine relied upon by the challenger.

If you need further guidance on the issues raised in this post, or your portfolio generally, please reach out to me.

This summary is provided for informational purposes only and is not intended to constitute legal advice nor does it create an attorney-client relationship with Rimon, P.C. or its affiliates.

Don Jackson is a Partner in Rimon’s Northern Virginia office.  His practice is centered on intellectual property litigation, with a particular emphasis on patent infringement litigation.  Don has been lead counsel in over 25 patent infringement litigations throughout the country including in popular patent districts like the Eastern and Western Districts of Texas, the District of Delaware, and the Northern and Central Districts of California.  In the past 12 months, Don has represented clients in about a dozen Federal Circuit appeals.  Don’s practice also includes work before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board and the U.S. International Trade Commission. Read more here.