by Dennis Crouch
In a recent non-precedential decision, the Federal Circuit provided an interesting analysis on how to evaluate evidence both supporting and undermining motivation to combine references in obviousness challenges. Laboratory Corporation of America Holdings v. Ravgen, Inc., No. 2023-1342, 2023-1345 (Fed. Cir. Jan. 6, 2025).
The case centered on Ravgen’s patent for non-invasive fetal DNA testing methods that use cell lysis inhibitors to analyze cell-free fetal DNA from maternal blood samples. U.S. Patent No. 7,332,277. LabCorp challenged a number of the claims as obvious, arguing that combining a 2001 Clinical Chemistry article (Chiu) with either of two other references teaching formaldehyde compounds (Bianchi or Rao) would have rendered the claims obvious under 35 U.S.C. § 103.
After initially granting the IPR petition, the PTAB ultimately rejected LabCorp’s obviousness challenge, finding insufficient motivation to combine the references. On appeal here, The Federal Circuit has affirmed in an opinion by Judge Lourie. In its decision, the court reinforced the legal doctrine that evidence need not “rise to the level of teaching away” in order to legitimately undermine motivation to combine. Rather, the fundamental question is whether the evidence presented “suggests reasons that a skilled artisan would be discouraged from pursuing such a combination.”
The Federal Circuit relied upon Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350 (Fed. Cir. 2017) as its key precedential guidance. Arctic Cat involved patents for thrust steering systems in personal watercraft (PWC), where Bombardier argued the claims would have been obvious by combining the thrust steering system from its 1997 Sea-Doo Challenger jet boat with an existing PWC. While some evidence supported this combination – including SAE reports identifying the Challenger system as a potential solution to PWC steering problems – those same SAE reports raised significant safety concerns about implementing the combination. The Federal Circuit upheld the jury’s finding of non-obviousness — explaining that even though this evidence didn’t rise to the level of “teaching away,” the concerns raised in the SAE reports provided substantial evidence that a skilled artisan would have been discouraged from making the proposed combination. The court emphasized that “the degree of teaching away will of course depend on the particular facts” but that statements or implications discouraging a combination are just as important as those on the other side in determining whether a motivation to combine existed.
One difference here: Arctic Cat emphasized how a single reference containing both encouraging and discouraging evidence made the jury’s no-motivation finding particularly reasonable. In Labcorp, however, the evidence about formaldehyde’s benefits and drawbacks came from different references — competing evidence from different sources. That difference did not appear to create any problem for the LabCorp court when applying the precedent.
In its appeal, LabCorp also argued that the Board improperly required a “perfect” combination rather than just a “desirable” one. This is a similar argument to one that worked in Honeywell International Inc. v. 3G Licensing, S.A., No. 2023-1354 (Fed. Cir. Jan. 2, 2025). Here, however, the court concluded that the Board appropriately weighed specific technical evidence about why skilled artisans would be concerned about DNA damage and leakage in the proposed combination.
Again bringing to mind the majority-dissent debate in Honeywell, the court here emphasized that challenges to how a tribunal weighs evidence need to identify legal errors rather than just disagreement with factual findings. The court repeatedly rejected LabCorp’s attempts to recharacterize the Board’s factual determinations as legal errors, reinforcing that “disagreement with the Board’s interpretations…does not amount to a demonstration that the Board somehow failed to use the proper analysis.”
While non-precedential – this is a nice one to read for both patent prosecutors and litigators facing extremely common hurdle of showing a lack of motivation to combine.