Obviousness without a Motivation to Combine

by Dennis Crouch

Realtime Data, LLC v. Iancu (Fed. Cir. 2019)

Interesting obviousness case here regarding motivation-to-combine.

The PTAB’s obviousness finding is based upon two prior art references. However, the references are not being combined so-to-speak. Rather, the Board found that the first reference (O’Brien) teaches all limitations of the lossless encoding scheme in Realtime’s claim 1.  The second reference (Nelson) was used essentially to show that the “string encoding” described in O’Brien was the same as the “dictionary-based encoding” in Realtime’s claims.

 

On appeal, Realtime argued a lack of “motivation to combine” the references — based upon longstanding precedent that a “factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references.” Dome Patent L.P. v. Lee, 799 F.3d 1372 (Fed. Cir. 2015).

Here, however, the Federal Circuit ruled that motivation-to-combine was not necessary since the obviousness finding did not combine two different disclosures. Rather, the Board used the second reference to help explain the first reference.

We conclude that, in this case, the Board was not required to make any finding regarding a motivation to combine given its reliance on O’Brien alone. . . . HP relied on Nelson merely to explain that O’Brien’s encoder is a type of dictionary encoder. . . . Under these circumstances, the Board was free to come to the very conclusion it reached: that O’Brien alone disclosed every element of claims 1–4, 8, and 28. And because the Board did not rely on Nelson for the disclosure of a particular element or teaching, the Board had no obligation to find a motivation to combine O’Brien and Nelson.

The CAFC noted that an anticipation determination rather than obviousness may have been more appropriate since O’Brien taught all of the elements of Realtime’s claim.  However, the court concluded that obviousness still worked — since  “a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, (CCPA 1982)).

= = = = =

Patent at issue: U.S. Patent No. 6,597,812, covering lossless data compression and decompression. Realtime sued HP and others back in 2015 and that led to the responsive IPR filing that is the subject of this appeal.

 

 

 

 

48 thoughts on “Obviousness without a Motivation to Combine

  1. 7

    So, its a rejection under 102 isn’t it?

  2. 6

    This doesn’t seem quite right. I didn’t read the case, though. But, saying two things are really the same thing is a combination and not a definition. Plus, how is it OK that you are given a 103 and make arguments against that and then the court decides that it is really a 102, so you don’t? That means that you are not provided the opportunity to properly form your arguments.

    Daniel Cole >>>The more courts lean on “equity” rather than Law – the worse things get. This started the slippery slope that led to the complete removal of the sections being important when 102 and 103 were combined in 101.

    This is exactly right. The CAFC has become a court of equity and should be disbanded.

    1. 6.1

      Plus, AAA JJ is right. Plus, it seems again they are acting as fact finders.

    2. 6.2

      But, saying two things are really the same thing is a combination and not a definition.

      Cannot agree with that statement.

      1. 6.2.1

        I will look at the opinion if given a link.

        I think it depends on how one is saying A is really B.

        1. 6.2.1.1

          Don’t need the opinion. I am basing my reply on the plain words tht you used here.

          Saying two things are really the same thing is the epitome of “defining,” and as such, is NOT a combination. Combination would plainly need two things NOT being the same thing in order to achieve something from the combination (and we are not talking about a mathematical quantity combination).

          1. 6.2.1.1.1

            Too simplistic. “Saying two things are the same” often is a factual determination based on the disclosures. A reference to a technical book may be a 102. Two patent disclosures–probably not.

            1. 6.2.1.1.1.1

              No, not too simplistic. I am not making this more simple than what it is.

              Your statement is in error for what the statement is.

              You may have meant to say something else, but what you said does not fly, and one does not need any case to see that.

              Feel free to rephrase your first thought if you like.

  3. 5

    Get ready for a deluge of “it has been held that a reason to combine is not required for obviousness” rejections. The geniuses who edit the MPEP are licking their chops over this case.

    Insert eyeroll emoji here.

    1. 5.1

      The geniuses who edit the MPEP are licking their chops over this case.

      Maybe. I think folks are making a bigger deal out of this than it deserves. To the extent that this case breaks new ground, it is only in saying that when there are no references that need to be combined for an obviousness rejection, then no motivation to combine is necessary.

      That is to say, the rule here is limited to single-document obviousness rejections. Nothing here is applicable in multiple-reference obviousness rejections, and it seems premature to worry that the MPEP is going to try to extend this case’s rule to the context of multiple-reference rejections.

      1. 5.1.1

        Word.

        A 102 rejection would certainly have been “cleaner”. If anything, the 103 rejection based on a single reference (with reliance on a second reference to provide a definition — no different than consulting a dictionary) gave the applicant a chance to play around in the secondary factor kiddie pool which would not have been permitted with a 102 rejection.

        it seems premature to worry that the MPEP is going to try to extend this case’s rule to the context of multiple-reference rejections

        Agreed. The bigger concern is Examiners making 103 rejections that should be straight up 102 rejections, and thereby permitting anticipated claims to be “rebutted” by, e.g., showings of commercial success, unexpected results.

        1. 5.1.1.1

          Cognitive dissonance on display yet again.

          Never mind that the Means to whatever Ends should be proper, eh Malcolm? Why in the world would something like that ever be important in law?

          Maybe you should have a discussion along that line with your malpractice insurance carrier.

          1. 5.1.1.1.1

            Hey, it’s Vapid Billy with his Inane Aphorisms!

            Let’s watch him dance about.

            [sips beer]

            Cute! Maybe he’ll drop his pants again.

            1. 5.1.1.1.1.1

              ?

              Your mind is most bizarre, my Accuse Others “friend.”

    2. 5.2

      The statute has no language that requires a motivation to combine the elements of the prior art, so it is conceivable to have fact patterns that do not include a finding of a motivation but support a conclusion of obviousness.

  4. 4

    Sloppy language: combining the references. Like binding the references together? The person having ordinary skill is supposed to know all the analogous art.

  5. 3

    I disagree with your interpretation because the Federal Circuit found that there were two arguments: one that relied on O’Brien alone and one in the alternative that combined O’Brien and Nelson. In the latter case, the Board “would have been required to demonstrate a sufficient motivation to combine the two references.” The Court went on to hold that “even if the Board were required to make a finding regarding a motivation to combine O’Brien with Nelson, its finding in this case is supported by substantial evidence.”

    It is unremarkable that a motivation to combine is only required when references are being combined. Because the references were only being combined in the alternative argument, the Court only considered whether the Board found a motivation to combine in that context.

  6. 2

    However, the court concluded that obviousness still worked

    Argghhhh – no, no, a million times no.

    Means to ANY Ends is critical, especially in law.

    One cannot say the 103 Means is good (when it is not good), and then excuse the bad means with a statement that the Ends are supported by a different Means.

    1. 2.1

      Great result for everybody except the undeserving applicant. Even with the secondary factors this applicant couldn’t get anywhere.

      Anticipation would have been the easier way to tank this junk however.

      1. 2.1.1

        Great result…

        That you feel compelled to post this in reply to my post only cements you as a clueless tr011 who just does not want to grasp the short, sweet and direct English language maxim of “The Ends do not justify the Means.”

        Maybe instead of being so quick to celebrate you take a moment to think about the larger context here, and just what my comment says.

        1. 2.1.1.1

          Larger context?

          Maybe your r@ycist @ h0le Perznert can declare a state of emergency and force the PTO to cite your preferred case.

          You’re a very serious person, “anon”! Very concerned about the “means” … at least whenever you don’t get the ends you desire. Very very serious stuff!

          1. 2.1.1.1.1

            Maybe your r@ycist @ h0le Perznert can declare

            My?

            He’s your president too.

            Besides that, what the F does that have to do with my post, or my reply noting how off your rely to my post was?

            very serious

            Ah, yes, the poker tell

            1. 2.1.1.1.1.1

              He’s your president too.

              He’s a f king criminal @ h0le and if a day goes by where you don’t think about that or tell someone that, then you’re part of the problem.

              1. 2.1.1.1.1.1.1

                Besides that, what the F does that have to do with my post, or my reply noting how off your rely to my post was?

                You missed the most important part for THIS forum (being as it is, a patent law blog – you never seem able to remember that, always letting your feelings get out of control).

    2. 2.2

      Nothing “critical” in this case about the choice of which sectionof the statute to use. If it were “critical”, there would be a different outcome.

      1. 2.2.1

        That is absolutely the wrong kind of thinking – especially coming from a supposed attorney.

        I have to think that you do not have any actual clients, as you seem unable (unwilling) to grasp the context in view of something untowards happening to one of your clients based on the (self- to a real attorney) evident danger of using an Ends justify the Means mindset.

        1. 2.2.1.1

          You are a truly biz arre f r e @ k if you think that the recitation of your vapid aphorisms isn’t anything but a longstanding j 0 ke.

          1. 2.2.1.1.1

            I did not create the aphorism, the aphorism is not vapid, and the meaning certainly applies – as your own continued posting demonstrates.

            Maybe actually do more than blather with your mindless and mis-aimed ad hominem…

    3. 2.3

      Academic. What evidence or argument for unobviousness could ever overcome a reference held fully anticipatory by the Fed. Cir.?

      1. 2.3.1

        Well, if you tank under 103 instead of 102, using the same reference, then the applicant effectively gets some extra ammunition, i.e., the opportunity to show that a product falling within the scope of the claims was sooooooooooooooo commercially successful after the filing date that it just couldn’t have been obvious to make it earlier because otherwise, hey, it would have been invented earlier because everybody loves money and everybody loves buying non-obvious stuff.

        1. 2.3.1.1

          This is really sad. Malcolm explaining to another non-innovation supporter as to why this is not academic – even as he above celebrates an Ends justify the Means “victory.”

          This only accentuates the cognitive dissonance so often on display from Malcolm.

          1. 2.3.1.1.1

            non-innovation supporter

            ROTFLMAO

            1. 2.3.1.1.1.1

              non-innovation supporter

              I didn’t get a lulz out of that, but it brought a smile…..

              I pictured something in the athletic sense.

      2. 2.3.2

        To be clear, just because all the claim limitations were found in a single document in this case, does not necessarily mean that the single document would have anticipated the claims.

        For example, imagine a claim to a drug comprising doxorubicin linked by serum albumin by a polylysine linker. It is possible, for example, for a single document to disclose two drugs, one doxorubicin linked to ferretin by a polylysine linker, and the other doxorubicin linked to serum albumin by a polyalanine linker. All of the elements (doxorubicin, serum albumin, polylysine linker to connect doxorubicin to another moiety) can be found between the two different embodiments in the single linker, but nowhere do you find all of the elments disclosed in a single embodiment, as required for anticipation. Net MoneyIN v. VeriSign, 545 F.3d 1359, 1369 (Fed. Cir. 2008).

        In other words, it is not clear to me that the petitioner here could have prevailed on an anticipation theory. Maybe they could have, but we would need more facts to know as much.

        Certainly, however, the single document obviousness theory in this case looks sound. The CAFC is quite correct that if one does not actually need to combine the secondary ref to reach the obviousness conclusion, the a lack of fact finding on motivation to combine the secondary ref is unnecessary.

        1. 2.3.2.1

          “the two different embodiments in the single linker…”

          Er, “the two different embodiments in the single document…” Mea culpa.

      3. 2.3.3

        PM, if I understand you right, you ask an “academic” question: Can a claim that the Fed Ct finds anticipated under 102 ever survive under 103?

        A very old English case comes to mind. Molins, I think, with a claim to a cigarette-making system built to run at a speed greater than 600 ciggies per second (or something like that). The court declared the claim to be invalid, anticipated by prior art machinery that was proven to have a capability to run at the claimed speed. Yet other evidence showed that it would not have been obvious to run the old machine at such speeds.

        How relevant that very old case is to present day patent law in the USA I have no idea.

        1. 2.3.3.1

          MaxDrei,

          Your observation serves a subtle – but still important – point.

          To obtain a patent, an innovation is needed to overcome each their own distinctive legal tests of BOTH anticipation and obviousness.

          Paul’s point about the question is geared to a conjunctive test, wherein to pass the test both sides of the conjunction must be met.

          Too many (including past courts) seem only too willing to take a conjunctive test situation and simply say “Meh, there is really only one element, and not two.”

          While the over-all passage may indeed be academic if one of two prongs of a conjunctive test is GIVEN as having been failed, there remains a critical distinction under the law whether just because one prong has failed that the other prong ALSO must fail.

          It’s rather like a math test, wherein guessing the right answer does NOT give you full credit – you have to show your work. You have to get TO the (desired) Ends with proper Means.

          As much as Malcolm likes to attempt to diminish the aphorism, that aphorism is critically on point in MANY situations of law.

          “Guessing right” and not showing the work is NOT acceptable.

  7. 1

    This is exactly the situation for anticipation discussed at MPEP 2131.01. link to uspto.gov
    Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

    (A) Prove the primary reference contains an “enabled disclosure;”
    (B) Explain the meaning of a term used in the primary reference; or
    (C) Show that a characteristic not disclosed in the reference is inherent.

    1. 1.1

      Yes, and this is not the first time the PTAB has used another reference in an IPR to “explain the meaning of a term used in the primary reference.” [More accurately, the meaning to a POSITA at the time the subject patent application was filed?]
      The Fed. Cir. has long since eased off on remanding cases decided on 103 but based on a single reference for a 102 rejection.

      1. 1.1.1

        Which is a bad thing to those of us who worry about keeping the actual meaning of the law and the sections separate. It IS important which section you decide under simply from a philosophical perspective since a courts job is to do what the law says NOT what THEY think is just or correct. The more courts lean on “equity” rather than Law – the worse things get. This started the slippery slope that led to the complete removal of the sections being important when 102 and 103 were combined in 101.

        This outcome shouldn’t have surprised anyone though – as the Supreme Court has been doing this since about the 1930’s. Learning this in law school was what sent me into the arms of the Federalist society ….

        1. 1.1.1.1

          This is especially critical in patent law – for what should be an obvious distinction (the express allocation of authority for writing the statutory law that is patent law – as a Constitutional matter).

        2. 1.1.1.2

          The Fed. Cir. has long since eased off on remanding cases decided on 103 but based on a single reference for a 102 rejection.

          Which is a bad thing to those of us who worry about keeping the actual meaning of the law and the sections separate.

          Huh? What are you talking about? The CAFC did not remand back for a decision on §102 because such a decision would have been totally irrelevant. The petitioner did not raise a challenge on §102 grounds. The petitioner raised a challenge on §103 grounds. The PTO decided those §103 grounds that the petitioner raised. The CAFC reviewed that §103 decision and (rightly) found the PTO’s decision well supported.

          Section 102 simply does not enter into this case because the petitioner did not raise §102 as a ground of challenge. The petitioner is the master of the IPR petition. If the petitioner does not want to raise §102, then it is not for either the PTO or the CAFC to inject a §102 issue into the case.

          The way that this case turned out is exactly how it should have turned out. It would have been a violation of the constitutional order of things if the CAFC had remanded for a consideration of the claims under §102 (especially when it was already clear that the claims are invalid under §102). Nothing in the statute says that a claim cannot be obvious merely because the obviousness case is built on a single reference rather than a combination of references.

          1. 1.1.1.2.1

            “especially when it was already clear that the claims are invalid under §102…”

            Er, sorry about that. I meant “especially when it was already clear that the claims are invalid under §103… .”

          2. 1.1.1.2.2

            It would have been cleaner if the CAFC had decided the case on 102 grounds, which appellate rules allow (explicitly, there is no need to remand if the result is set in stone), or decided it on 103 grounds with the explanation that anticipation is the trivial form of obviousness (and maybe the CAFC felt compelled to stick to obviousness because the litigants had overlooked the anticipation issue?). Or maybe they should have explained what you explained, that the IPR basis restricted their thinking, and led to a sloppy decision to get to the proper result (is that really the case, that an IPR petitioner who misses an indisputable anticipation rejection hamstrings all the judges?).
            There was no need to talk about obviousness based on a single reference with no motivation to combine. We will all be fending off rejections based on this muddled opinion for years.

            1. 1.1.1.2.2.1

              There was no need to talk about obviousness based on a single reference with no motivation to combine.

              Odd, then, that the applicant felt compelled to bring it up.

            2. 1.1.1.2.2.2

              It would have been cleaner if the CAFC had decided the case on 102 grounds, which appellate rules allow…

              Er, whether or not the appellate rules allow that, the law explicitly does not. SEC v. Chenery Corp., 318 U.S. 80, 87 (1943) (“The grounds upon which an administrative order must be judged are those upon which the record discloses that its action was based”). This was not a decision from a trial court. This was a decision from an administrative agency. Administrative agency decisions can only be affirmed on the basis of the grounds decided below, not on alternative grounds (as might be done with district court decisions).

              It would have been cleaner if the CAFC had… decided it on 103 grounds with the explanation that anticipation is the trivial form of obviousness (and maybe the CAFC felt compelled to stick to obviousness because the litigants had overlooked the anticipation issue?).

              Why? Please see 2.3.2 above. On the facts that we have in this CAFC opinion, it is not clear to me that these claims could have been invalidated on anticipation grounds. The mere fact that all elements are present in a single document is not enough to sustain an anticipation challenge. This case was rightly decided on a single-reference obviousness grounds. Maybe it could also have been decided on anticipation grounds (I would actually have to read the reference to know, and I am not interested in putting in that kind of effort for such an irrelevant point). How is it “cleaner” for the case to be decided on one logically and legally sound basis than another equally logically and legally sound basis (especially when a Chenery violation would be necessary to reach that alternative basis—a basis that is maybe not even as logically or legally sound as the actual basis already decided)?

    2. 1.2

      Exactly correct. The real question here is how the PTAB got confused enough to discuss this in terms of obviousness.

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