Ten Years after KSR, Motivation to Combine Moves Back into the Spotlight
| Author | Chao Gao - Peter M. Jay |
| Position | Chao Gao is a partner at Wenderoth, Lind & Ponack in Washington, DC, where his practice focuses primarily on procuring patents in the chemical arts. He also regularly counsels a variety of domestic and international clients regarding all aspects of US patent law, including providing infringement and validity opinions. He can be reached at cgao... |
| Pages | 25-64 |
Ten Years after
KSR
,
Motivation to Combine Moves
Back into the Spotlight
By Chao Gao and PeterM. Jay
Ten years ago, the Supreme Court issued its seminal decision in KSR Inter-
national Co. v. Teleex Inc., rocking the world of patent practitioners by
decisively demoting the motivation to combine analysis, the primary criterion
for determining obviousness.1 Recently, however, the United States Court of Appeals
for the Federal Circuit (CAFC) has shown a renewed interest in the sufciency of
motivation to combine arguments relied on in an obviousness analysis. The decisions
from the CAFC discussed below provide a practical reminder that a proper motivation
to combine determination is essential to a well-reasoned conclusion of obviousness.
Image: iStockPhoto
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
agreeing that the TSM test provided helpful insight as to what
a person having ordinary skill in the art might have done at
the time a claimed invention was made, the Supreme Court
instilled a exible approach for determining obviousness.
Requiring a concentration on resolving the Graham factors
and setting forth an explicit analysis in support of the ulti-
mate conclusion, the Supreme Court stated that “the analysis
need not seek out precise teachings directed to the specic
subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”12
Thereafter, the United States Patent and Trademark Ofce
amended the MPEP to assert that the conclusion of obviousness
should be determined in view of the Graham factors, and must be
supported by an explicit and “clear articulation of the reason(s)
why the claimed invention would have been obvious.”13 The pre-
viously all-powerful TSM test was replaced with seven exemplary
rationales for supporting a nding of obviousness. Although the
TSM test was not excluded altogether, it was relegated to last
place.14 And so, post-KSR, a teaching, suggestion, or motivation
to combine the cited references became an insignicant and often
ignored rationale in obviousness determinations. Recent CAFC
decisions, however, appear to signal a potential shift marking the
revival of at least a exible TSM requirement.
In In re NuVasive, Inc., the CAFC recently vacated a nal
written decision in an inter partes review (IPR) because the
Patent Trial and Appeal Board (PTAB) failed to sufciently
articulate a motivation to combine prior art references.15 The
CAFC reviews such nal written decisions through the lens
of the Administrative Procedure Act (APA), whereby the stan-
dard for factual determinations is substantial evidence, and the
standard for legal determinations is de novo.16 Both standards
are relevant to the review of nal written decisions because the
PTAB must: (1)make the necessary ndings and have an ade-
quate evidentiary basis for its ndings; and (2)examine the
relevant data and articulate a satisfactory explanation for its
action including a rational connection between the facts found
and the choice made.17 The CAFC found that the nal written
decision in NuVasive failed to meet these minimum standards.18
A primary issue in the nal written decision in NuVasive
was whether a combination of references rendered unpatent-
able a spinal fusion implant having radiopaque markers in the
medial plane (i.e., near the middle of the implant).19 During the
IPR, the petitioner argued that it would have been obvious to
include the radiopaque markers of the secondary reference in
the implants of the primary references in order to provide “addi-
tional information” regarding the location and/or orientation of
the implant, both during surgery and after implantation.20 The
patent owner responded by arguing that the reason articulated
(i.e., the “additional information”) is simply a vague explanation
with no rational underpinning.21 Specically, the patent owner
argued that the petitioner’s expert did not provide a rational
Chao Gao is a partner at Wenderoth, Lind & Ponack in Washington, DC, where his practice focuses primarily on procuring patents in the
chemical arts. He also regularly counsels a variety of domestic and international clients regarding all aspects of US patent law, including
providing infringement and validity opinions. He can be reached at cgao@wenderoth.com. PeterM. Jay is an associate at Wenderoth, Lind
& Ponack in Washington, DC, where he represents international and domestic clients in a variety of areas including patent prosecution and
counseling in the chemical arts. He can be reached at pjay@wenderoth.com.
Historically, courts utilized wildly inconsistent standards for
determining obviousness prior to the Patent Act of 1952.2 In an
effort to create a “stabilizing effect and minimize great depar-
tures which have appeared in some cases,”3 the drafters of the
Patent Act of 1952 set out to “provide a standard according to
which the subjective decision [of obviousness] must be made.”4
Out of that effort was born §103 of the Patent Act of 1952,
which provided that “[a] patent may not be obtained ... if the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art.”5
The issue of how to determine what would have been obvi-
ous at the time the invention was made, however, continued
to plague those prosecuting and examining patent claims.
Attempting to bring further uniformity to the analysis, the
United States Court of Customs and Patent Appeals, the pre-
decessor to the CAFC, asserted the rule that a combination
of the prior art is not obvious “unless the art also contains
something to suggest the desirability of the proposed com-
bination.”6 This rule, requiring that the applied art contain
some teaching, suggestion, or motivation to combine the dis-
closures therein (TSM test), soon became revered as a vital
safeguard against improper hindsight reasoning.7
Interestingly, the Supreme Court’s pivotal decision in Gra-
ham v. John Deere Co., which set forth the modern standard for
determining obviousness, did not include the TSM test among its
essential factors.8 Nonetheless, courts continued to apply the TSM
test as an integral indicator of obviousness.9 In fact, the TSM test
became so crucial to the obviousness analysis that it was added to
the Manual of Patent Examining Procedure (MPEP) in 1995 as
the primary criterion for determining obviousness.10
In 2007, however, strict reliance on the TSM test was
called into question by the Supreme Court in KSR.11 Although
Strict reliance
on the TSM test
was called into
question by KSR.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
explanation for what the “additional information” would be, and
that the additional information would be redundant or even cause
confusion.22 Although agreeing with the petitioner, the PTAB
“never articulated why the additional information would benet
a [skilled artisan] when implanting a posterior lumbar interbody
fusion implant.”23 The PTAB also “failed to explain the type of
additional information a [skilled artisan] would obtain or how
the [skilled artisan] would use that information.”24 Therefore,
the CAFC held that the PTAB did not sufciently articulate a
motivation to combine the references.25 Accordingly, the CAFC
vacated the nal written decision of the PTAB because the
CAFC could not provide meaningful review of the motivation to
combine reasoning due to the insufciency.26
In PersonalWeb Technologies, LLC v. Apple, Inc., the CAFC
again addressed whether the PTAB had sufciently supported its
conclusion of obviousness in an IPR.27 The petitioner, arguing that
the claims were invalid for being obvious over a combination of
two references, asserted that a person having ordinary skill in the
art “would have understood” that the combination thereof would
have achieved the claimed features.28 In its analysis, the PTAB
merely concluded: “We agree in this regard and are persuaded that
the combination of [the cited references] renders claims ... unpat-
entable under 35 U.S.C. §103.”29 On appeal, the CAFC noted that
this “reasoning seems to say no more than that a skilled artisan,
once presented with the two references, would have understood
that they could be combined. And that is not enough; it does not
imply a motivation to pick out those two references and combine
them to arrive at the claimed invention.”30 Rooting its decision in
the expansive and exible approach set forth in KSR, the CAFC
noted that it is important to clearly articulate why a person having
ordinary skill in the art would have been motivated to combine the
applied references “because inventions in most, if not all, instances
rely upon building blocks long since uncovered, and claimed dis-
coveries almost of necessity will be combinations of what, in
some sense, is already known.”31
Even though NuVasive and PersonalWeb were decided in the
context of a review of an agency decision under the APA, the
underlying reasoning is also applicable during patent examina-
tion. For instance, in In re Van Os, the CAFC specically applied
the reasoning from NuVasive to vacate and remand a PTAB deci-
sion addressing an appeal during patent examination because
the PTAB’s actions were “insufciently or inappropriately
explained.”32 In Van Os, the PTAB agreed with the examiner’s
analysis that the claims at issue were obvious because combining
the cited references “would have been ‘intuitive.’”33 However,
the CAFC held that “[a]bsent some articulated rationale, a nd-
ing that a combination of prior art would have been ‘common
sense’ or ‘intuitive’ is no different than merely stating the com-
bination ‘would have been obvious.’ Such a conclusory assertion
with no explanation is inadequate to support a nding that
there would have been a motivation to combine.”34 Recogniz-
ing the importance of safeguarding against hindsight reasoning,
the CAFC explained that “[t]his type of nding, without more,
tracks the ex post reasoning KSR warned of and fails to identify
any actual reason why a skilled artisan would have combined the
elements in the manner claimed.”35
In view of the decisions in NuVasive and PersonalWeb,
patent practitioners should be vigilant to consider carefully
the examiner’s reasons for combining the applied art, rather
than merely focusing on the elements of the references them-
selves. In particular, PersonalWeb emphasizes that just
because two references can be combined does not necessarily
mean that one skilled in the art would have had a motivation
to do so. Also, an obviousness determination, even during
prosecution, cannot be supported by merely relying on “obvi-
ous improvements”36 or “common sense.”37
The CAFC decisions discussed above highlight the resurg-
ing focus on a well-articulated motivation to combine in
supporting an obviousness determination. In practice, arguing
insufciency of motivation to combine can be difcult dur-
ing prosecution because examiners tend to rely on the broadest
statements of KSR. However, the CAFC has recently reminded
the PTAB not only of the importance of the motivation analysis
but also that it “knows how to meet [its] burden.”38 Therefore,
recent CAFC decisions suggest that patent practitioners should
consider appeals where motivation to combine is a central issue
during prosecution, and that the PTAB will carefully scrutinize
examiners’ rationales for combining references. n
Endnotes
1. 550 U.S. 398 (2007); see also Michael Barclay, Some Thoughts
about KSR v. Teleex: The “Marketplace” Test for Obviousness,
SCOTUS (Apr.30, 2007), http://www.scotusblog.com/2007/04/
some-thoughts-about-ksr-v-teleex-the-marketplace-test-for-obvious-
ness/ (“[T]his is the most important patent case of the last 20 years,
and perhaps since the passage of the 1952 Patent Act.”).
2. See GeorgeM. Sirilla, 35 U.S.C. §103: From Hotchkiss to
Hand to Rich, the Obvious Patent Law Hall-of-Famers, 32 J. M-
L. R. 437, 468–69, 472–73, 487, 501 (1999).
3. H.R. R. N. 82-1923, at 7 (1952).
4. GilesS. Rich, The Principles of Patentability, 42 J. P. O.
S’ 75, 89 (1960).
5. Patent Act of 1952, §103, 66 Stat. 792, 798.
6. In re Bergel, 292 F.2d 955, 956–57 (C.C.P.A. 1961).
7. See KSR Int’l Co. v. Teleex Inc., 550 U.S. 398, 407 (2007);
In re Dembiczak, 175 F.3d 994, 998–99 (Fed. Cir. 1999) (“Our case
law makes clear that the best defense against the subtle but power-
ful attraction of a hindsight-based obviousness analysis is rigorous
application of the requirement for a showing of the teaching or moti-
vation to combine prior art references. Combining prior art references
without evidence of such a suggestion, teaching, or motivation sim-
ply takes the inventor’s disclosure as a blueprint for piecing together
the prior art to defeat patentability—the essence of hindsight.” (cita-
tions omitted)); ACS Hosp. Sys., Inc. v. Monteore Hosp., 732 F.2d
1572, 1577 (Fed. Cir. 1984) (“Obviousness cannot be established by
combining the teachings of the prior art to produce the claimed inven-
tion, absent some teaching or suggestion supporting the combination.
Under section 103, teachings of references can be combined only if
there is some suggestion or incentive to do so.”).
8. See 383 U.S. 1, 17 (1966).
9. See In re Lee, 277 F.3d 1338, 1342–43 (Fed. Cir. 2002) (“The essen-
tial factual evidence on the issue of obviousness is set forth in Graham v.
John Deere Co. and extensive ensuing precedent. The patent examination
process centers on prior art and the analysis thereof. When patentability
turns on the question of obviousness, the search for and analysis of the prior
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